Parts, Form, and Content of Application

601	Content of Provisional and Nonprovisional 
Applications    

601.01	Complete Application  

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

601.01(b)	Provisional Applications Filed Under 
35 U.S.C. 111(b)

601.01(c)	Conversion to a Provisional Application  

601.01(d)	Application Filed Without All Pages of 
Specification 

601.01(e)	Nonprovisional Application Filed Without 
At Least One Claim  

601.01(f)	Applications Filed Without Drawings 

601.01(g)	Applications Filed Without All Figures of 
Drawings 

601.01(h)	Forms 

601.02	Power of Attorney or Authorization of Agent  

601.03	Change of Correspondence Address  

601.04	National Stage Requirements of the United 
States as a Designated Office  

602	Original Oath or Declaration   

602.01	Oath Cannot Be Amended  

602.02	New Oath or Substitute for Original 

602.03	Defective Oath or Declaration  

602.04	Foreign Executed Oath 

602.04(a)	Foreign Executed Oath Is Ribboned to 
Other Application Papers 

602.05	Oath or Declaration - Date of Execution   

602.05(a)	Oath or Declaration in Continuation and 
Divisional Applications 

602.06	Non-English Oath or Declaration  

602.07	Oath or Declaration Filed in United States 
as a Designated Office 

603	Supplemental Oath or Declaration  

603.01	Supplemental Oath or Declaration Filed 
After Allowance   

604	Administration or Execution of Oath   

604.01	Seal  

604.02	Venue  

604.03(a)	Notarial Powers of Some Military Officers  

604.04	Consul 

604.04(a)	Consul - Omission of Certificate 

604.06	By Attorney in Case   

605	Applicant 

605.01	Applicant's Citizenship   

605.02	Applicant's Residence   

605.03	Applicant's Post Office Address 

605.04(a)	Applicant's Signature and Name 

605.04(b)	One Full Given Name Required 

605.04(c)	Inventor Changes Name 

605.04(d)	Applicant Unable to Write 

605.04(e)	May Use Title With Signature 

605.04(f)	Signature on Joint Applications - Order 
of Names 

605.04(g)	Correction of Inventorship 

605.05	Administrator, Executor, or Other Legal 
Representative  

605.07	Joint Inventors  

606	Title of Invention   

606.01	Examiner May Require Change in Title 

607	Filing Fee 

607.02	Returnability of Fees  

608	Disclosure   

608.01	Specification 

608.01(a)	Arrangement of Application 

608.01(b)	Abstract of the Disclosure   

608.01(c)	Background of the Invention  

608.01(d)	Brief Summary of Invention 

608.01(e)	Reservation Clauses Not Permitted 

608.01(f)	Brief Description of Drawings  

608.01(g)	Detailed Description of Invention   

608.01(h)	Mode of Operation of  Invention   

608.01(i)	Claims   

608.01(j)	Numbering of Claims 

608.01(k)	Statutory Requirement of Claims 

608.01(l)	Original Claims 

608.01(m)	Form of Claims  

608.01(n)	Dependent Claims 

608.01(o)	Basis for Claim Terminology in Description 

608.01(p)	Completeness  

608.01(q)	Substitute or Rewritten  Specification 

608.01(r)	Derogatory Remarks About Prior Art 
in Specification 

608.01(s)	Restoration of Canceled Matter 

608.01(t)	Use in Subsequent Application 

608.01(u)	Use of Formerly Filed Incomplete Application   

608.01(v)	Trademarks and Names Used in Trade 

608.02	Drawing 

608.02(a)	New Drawing - When Required 

608.02(b)	Informal Drawings  

608.02(c)	Drawing Print Kept in File Wrapper  

608.02(d)	Complete Illustration in Drawings  

608.02(e)	Examiner Determines Completeness 
of Drawings 

608.02(f)	Modifications in Drawings 

608.02(g)	Illustration of Prior Art 

608.02(h)	Additional, Duplicate, or Substitute Drawings   

608.02(i)	Transfer of Drawings From Prior Applications  

608.02(m)	Drawing Prints   

608.02(n)	Duplicate Prints in Patentability Report Cases 

608.02(o)	*>Notations< Entered on Drawing   

608.02(p)	Correction of Drawings   

608.02(q)	Conditions Precedent to Amendment of 
Drawing  

608.02(r)	Separate Letter to Draftsperson 

608.02(t)	Cancelation of Figures 

608.02(v)	Drawing Changes Which Require  Sketches 

608.02(w)	Drawing Changes Which May Be Made 
Without Applicant's Sketch  

608.02(x)	Disposition of Orders for Amendment 
of Drawing   

608.02(y)	Return of Drawing   

608.02(z)	Allowable Applications Needing Drawing 
Corrections or Formal Drawings  

608.03	Models, Exhibits, Specimens 

608.03(a)	Handling of Models, Exhibits, and Specimens  

608.04	New Matter 

608.04(a)	Matter Not in Original Specification, Claims, 
or Drawings 

608.04(b)	New Matter by Preliminary Amendment   

608.04(c)	Review of Examiner's Holding of New Matter 

608.05	Deposit of Computer Program Listings 

609	Information Disclosure Statement 

   

601	Content of Provisional and Nonprovi-
sional Applications  [R-1]

35 U.S.C. 111.  Application

(a)	IN GENERAL.-

(1)	WRITTEN APPLICATION.-An application for patent 
shall be made, or authorized to be made, by the inventor, except as other-
wise provided in this title, in writing to the Commissioner.

(2)	CONTENTS.-Such application shall include-

(A)	a specification as prescribed by section 112 of this title; 

(B)	a drawing as prescribed by section 113 of this title; and

(C)	an oath by the applicant as prescribed by section 115 of 
this title.

(3)	FEE AND OATH.-The application must be accompanied 
by the fee required by law. The fee and oath may be submitted after the 
specification and any required drawing are submitted, within such period 
and under such conditions, including the payment of a surcharge, as may 
be prescribed by the Commissioner. 

(4)	FAILURE TO SUBMIT.-Upon failure to submit the fee 
and oath within such prescribed period, the application shall be regarded 
as abandoned, unless it is shown to the satisfaction of the Commissioner 
that the delay in submitting the fee and oath was unavoidable or uninten-
tional. 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.

(b)	PROVISIONAL APPLICATION.-

(1)	AUTHORIZATION.-A provisional application for patent 
shall be made or authorized to be made by the inventor, except as other-
wise provided in this title, in writing to the Commissioner. Such applica-
tion shall include-

(A)	a specification as prescribed by the first paragraph of 
section 112 of this title; and

(B)	a drawing as prescribed by section 113 of this title.

(2)	CLAIM.-A claim, as required by the second through 
fifth paragraphs of section 112, shall not be required in a provisional appli-
cation.

(3)	FEE.-(A) The application must be accompanied by the fee 
required by law.

(B)	The fee may be submitted after the specification and any 
required drawing are submitted, within such period and under such condi-
tions, including the payment of a surcharge, as may be prescribed by the 
Commissioner.

(C)	Upon failure to submit the fee within such prescribed 
period, the application shall be regarded as abandoned, unless it is shown 
to the satisfaction of the Commissioner that the delay in submitting the fee 
was unavoidable or unintentional.

(4)	FILING DATE.-The filing date of a provisional application 
shall be the date on which the specification and any required drawing are 
received in the Patent and Trademark Office.

(5)	ABANDONMENT.-**>Notwithstanding the absence of a 
claim, upon timely request and as prescribed by the Director, a provisional 
application may be treated as an application filed under subsection (a). 
Subject to section  119(e)(3) of this title, if no such request is made, the 
provisional application shall be regarded as abandoned 12 months after the 
filing date of such application and shall not be subject to revival after such 
12-month period.<

(6)	OTHER BASIS FOR PROVISIONAL APPLICATION.-
Subject to all the conditions in this subsection and section 119(e) of this 
title, and as prescribed by the Commissioner, an application for patent 
filed under subsection (a) may be treated as a provisional application for 
patent.

(7)	NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST 
FILING DATE.-A provisional application shall not be entitled to the 
right of priority of any other application under section 119 or 365(a) of 
this title or to the benefit of an earlier filing date in the United States under 
section 120, 121, or 365(c) of this title.

(8)	APPLICABLE PROVISIONS.-The provisions of this title 
relating to applications for patent shall apply to provisional applications 
for patent, except as otherwise provided, and except that provisional appli-
cations for patent shall not be subject to sections 115, 131, 135, and 157 of 
this title.

37 CFR 1.51.  General requisites of an application.

(a)	Applications for patents must be made to the Commissioner of 
Patents and Trademarks.

(b)	A complete application filed under ? 1.53(b) comprises:

(1)	A specification as prescribed by  35 U.S.C. 112, including a 
claim or claims, see ?? 1.71 to 1.77;

(2)	An oath or declaration, see ? 1.63 and ? 1.68;

(3)	Drawings, when necessary, see ?? 1.81 to 1.85; and

(4)	The prescribed filing fee, see ? 1.16.

(c)	A complete provisional application filed under ? 1.53(c) com-
prises:

(1)	A cover sheet identifying:

(i)	The application as a provisional application,

(ii)	The name or names of the inventor or inventors, (see 
? 1.41(a)(2)),

(iii)	The residence of each named inventor,

(iv)	The title of the invention,

(v)	The name and registration number of the attorney or 
agent (if applicable),

(vi)	The docket number used by the person filing the applica-
tion to identify the application (if applicable),

(vii)	The correspondence address, and

(viii)	The name of the U.S. Government agency and Govern-
ment contract number (if the invention was made by an agency of the U.S. 
Government or under a contract with an agency of the U.S. Government);

(2)	A specification as prescribed by the first paragraph of  
35 U.S.C. 112, see ? 1.71;

(3)	Drawings, when necessary, see ?? 1.81 to 1.85; and

(4)	The prescribed filing fee, see ? 1.16.

(d)	Applicants are encouraged to file an information disclosure 
statement in nonprovisional applications.  See ? 1.97 and ? 1.98.  No 
information disclosure statement may be filed in a provisional application.

GUIDELINES FOR DRAFTING A NONPROVI-
SIONAL  PATENT APPLICATION UNDER 35 U.S.C. 
111(a)

The following guidelines illustrate the preferred layout 
and content of patent applications filed under 35 U.S.C. 
111(a). These guidelines are suggested for the applicant's 
use.  See also  37 CFR 1.77 and  MPEP ? 608.01(a).

Arrangement and Contents of the Specification

The following order of arrangement is preferable in 
framing the specification. Except for the reference to the 
"microfiche appendix" and the drawings, each of the let-
tered items should appear in upper case, without underlin-
ing or bold type, as section headings. If no text follows the 
section heading, the phrase "Not Applicable" should follow 
the section heading.

(A)	Title of the invention.

(B)	Cross-reference to related applications.

(C)	Statement regarding federally sponsored research 
or development.

(D)	Reference to a "Microfiche appendix." (See  
37 CFR 1.96 (c)). 

(E)	Background of the invention.

(1)	Field of the invention.

(2)	Description of related art including information 
disclosed under  37 CFR 1.97 and  37 CFR 1.98.

(F)	Brief summary of the invention. 

(G)	Brief description of the several views of the draw-
ing.

(H)	Detailed description of the invention.

(I)	Claim(s) (commencing on a separate sheet).

(J)	Abstract of the Disclosure (commencing on a sep-
arate sheet).

(K)	Drawings.

(L)	Sequence Listing (See 37 CFR 1.821 through 
1.825). 

Content

(A)	Title of the Invention: (See  37 CFR 1.72(a).) The 
title of the invention should be placed at the top of the first 
page of the specification. It should be brief but technically 
accurate and descriptive preferably from two to seven 
words.

(B)	Cross-Reference to Related Applications: (See  
37 CFR 1.78 and  MPEP ? 201.11.)

(C)		Statement Regarding Federally Sponsored 
Research or  Development:  (See  MPEP ? 310).

(D)	Reference to a "Microfiche Appendix": (See  
37 CFR 1.96(c) and  MPEP ? 608.05).  The total number of 
microfiche and total number of frames should be specified.

(E)	Background of the Invention: The specification 
should set forth the Background of the Invention in two 
parts:

(1)	Field of the Invention:  A statement of the field 
of art to which the invention pertains. This statement may 
include a paraphrasing of the applicable U.S. patent classi-
fication definitions. The statement should be directed to the 
subject matter of the claimed invention. This item may also 
be titled "Technical Field".

(2)	Description of the Related Art Including Infor-
mation Disclosed Under 37 CFR 1.97 and 1.98:  A para-
graph(s) describing to the extent practical the information 
known to the applicant, including references to specific 
documents where appropriate. Where applicable, the prob-
lems involved in the information disclosed which are 
solved by the applicant's invention, should be indicated. 
This item may also be titled "Background Information".

(F)	Brief Summary of the Invention: A brief summary 
or general statement of the invention as set forth in  37 CFR 
1.73. The summary is separate and distinct from the 
abstract and is directed toward the invention rather than the 
disclosure as a whole. The summary may point out the 
advantages of the invention or how it solves problems pre-
viously existent in the art (and preferably indicated in the 
Background of the Invention). In chemical cases the sum-
mary should point out in general terms the utility of the 
invention. If possible, the nature and gist of the invention or 
the inventive concept should be set forth. Objects of the 
invention should be treated briefly and only to the extent 
that they contribute to an understanding of the invention. 

(G)	Brief Description of the Several Views of the  
Drawing(s): A reference to and brief description of each 
Figure in the drawing(s) as set forth in  37 CFR 1.74.

(H)	Detailed Description of the Invention:   A descrip-
tion of the preferred embodiment(s) of the invention as 
required in  37 CFR 1.71. The description should be as 
short and specific as is necessary to adequately and accu-
rately describe the invention. 

Where elements or groups of elements, compounds, 
and processes, which are conventional and generally 
widely known in the field to which the invention pertains, 
form a part of the invention described and their exact nature 
or type is not necessary for an understanding and use of the 
invention by a person skilled in the art, they should not be 
described in detail. However, where particularly compli-
cated subject matter is involved or where the elements, 
compounds, or processes may not be commonly or widely 
known in the field, the specification should refer to another 
patent or readily available publication which adequately 
describes the subject matter.

(I)  	Claim(s): (See  37 CFR 1.75 and  MPEP 
? 608.01(m).) The claim or claims must commence on a 
separate sheet. See  37 CFR 1.52(b).  Where a claim sets 
forth a plurality of elements or steps, each element or step 
of  the claim should be separated by a line indentation. 
There may be plural indentations to further segregate sub-
combinations or related steps.

Reference characters corresponding to elements 
recited in the detailed description and the drawings may be 
used in conjunction with the recitation of the same element 
or group of elements in the claims. The reference charac-
ters, however, should be enclosed within parentheses so as 
to avoid confusion with other numbers or characters which 
may appear in the claims. The use of reference characters is 
to be considered as having no effect on the scope of the 
claims.

Claims should preferably be arranged in order of scope 
so that the first claim presented is the least restrictive. All 
dependent claims should be grouped together with the 
claim or claims to which they refer to the extent practica-
ble. Where separate species are claimed, the claims of like 
species should be grouped together where possible. Simi-
larly, product and process claims should be separately 
grouped. Such arrangements are for the purpose of facilitat-
ing classification and examination.

The form of claim required in  37 CFR 1.75(e) is par-
ticularly adapted for the description of improvement-type 
inventions. Such a claim is to be considered a combination 
claim and should be drafted with this thought in mind.

In drafting claims in accordance with  37 CFR 1.75(e), 
the preamble is to be considered to positively and clearly 
include all the elements or steps recited therein as a part of 
the claimed combination.

(J)  	Abstract of the Disclosure: (See  37 CFR 1.72(b) 
and  MPEP ? 608.01(b).)  The abstract must commence on 
a separate sheet.  See  37 CFR 1.52(b).

(K)	Drawings: (See  37 CFR 1.81 and  37 CFR 1.83-
1.85, and  MPEP ? 608.02).

(L)	Sequence Listing: (See  37 CFR 1.821-1.825).

 Oath or Declaration

(See  37 CFR 1.63, 1.68, and 1.69.) Where one or more 
previously filed foreign applications are cited or mentioned 
in the oath or declaration, complete identifying data, 
including the application number as well as the country and 
date of filing, should be provided.

GUIDELINES FOR DRAFTING A PROVISIONAL 
APPLICATION UNDER 35 U.S.C. 111(b)

A provisional application should preferably conform to 
the arrangement guidelines for nonprovisional applications. 
The specification must, however, comply with the first 
paragraph of  35 U.S.C. 112 and refer to drawings, where 
necessary for an understanding of the invention. Unlike an 
application filed under  35 U.S.C. 111(a), a provisional 
application does not need claims. Furthermore, no oath or 
declaration is required. See  MPEP ? 201.04(b).

A cover sheet providing identifying information is 
required for a complete provisional application. In accor-
dance with  37 CFR 1.51(c)(1) the cover sheet must state 
that it is for a provisional application, it must identify and 
give the residence of the inventor or inventors, and it must 
give a title of the invention. The cover sheet must also give 
the name and registration number of the attorney or agent 
(if applicable), the docket number used by the person filing 
the application (if applicable) and the correspondence 
address. If there is a governmental interest, the cover sheet 
must include a statement as to rights to inventions made 
under Federally sponsored research and development (See  
MPEP ? 310).  37 CFR 1.51(c)(1)(viii) requires the name 
of the Government agency and the contract number, if the 
invention was developed by or while under contract with an 
agency of the U.S. Government. 

Unlike applications filed under  35 U.S.C. 111(a), provi-
sional applications should not include an information dis-
closure statement. See  37 CFR 1.51(d).  Since no 
substantive examination is made, such statements are 
unnecessary. The Office will not accept an information dis-
closure statement in a provisional application. Any such 
statement received, will be returned or disposed of at the 
convenience of the Office.

This cover sheet information enables the Office to pre-
pare a proper filing receipt and provides the Office of Ini-
tial Patent Examining (OIPE) with most of the information 
needed to process the provisional application. See  MPEP 
? 201.04(b) for a sample cover sheet.

THE APPLICATION

The specification must be filed in or translated into the 
English language and must be legibly written either by a 
typewriter or mechanical printer in permanent dark ink or 
its equivalent.  Except for the drawing, the application 
papers (specification, including claims, abstract, oath or 
declaration, and all papers which are to become part of the 
permanent records of the Patent and Trademark Office) 
must have each page plainly written on only one side of a 
sheet of paper.  The sheets of paper must be the same size 
and either 21.0 cm. by 29.7 cm. (DIN A4) or 21.6 cm. by 
27.9 cm. (8 1/2 by 11 inches).  Each sheet must include a 
top margin of at least 2.0 cm. (3/4 inch), a left side margin 
of at least 2.5 cm. (1 inch), a right side margin of at least 
2.0 cm. (3/4 inch) and a bottom margin of at least 2.0 cm. 
(3/4 inch), and no holes should be made in the sheets as 
submitted.  The lines of the specification, and any amend-
ments to the specification, must be 1 1/2 or double spaced.  
The pages of the specification including claims and abstract 
must be numbered consecutively, starting with 1, the num-
bers should be centrally located above or, preferably, below 
the text.  See  37 CFR 1.52(b) and  MPEP ? 608.01.

The parts of the application may be included in a single 
document.

Determination of completeness of an application is cov-
ered in  MPEP ? 506 and  ? 601.01 -  ? 601.01(g).

The elements of the application are secured together in a 
file wrapper, bearing appropriate identifying data including 
the application number and filing date (MPEP ? 719).

Note

Provisional applications,  MPEP ? 201.04(b).

Divisional applications,  MPEP ? 201.06.

Continuation applications,  MPEP ? 201.07.

Continued prosecution applications,  
MPEP ? 201.06(d).

Reissue applications,  MPEP ? 1401.

Design applications,  MPEP Chapter 1500.

Plant applications,  MPEP Chapter 1600.

Reexamination,  MPEP Chapter 2200.

A model, exhibit, or specimen is not required as part of 
the application as filed, although it may be required in the 
prosecution of the application (37 CFR 1.91 and 1.93,  
MPEP ? 608.03).

37 CFR 1.59.  Expungement of information or copy of papers in 
application file.

(a)(1)	Information in an application will not be expunged and 
returned, except as provided in paragraph (b) of this section.  See ? 1.618 
for return of unauthorized and improper papers in interferences.

(2)	Information forming part of the original disclosure (i.e., 
written specification including the claims, drawings, and any preliminary 
amendment specifically incorporated into an executed oath or declaration 
under ?? 1.63 and 1.175) will not be expunged from the application file.

(b)	Information, other than what is excluded by paragraph (a)(2) of 
this section, may be requested to be expunged and returned to applicant 
upon petition under this paragraph and payment of the petition fee set 
forth in ? 1.17(i).  Any petition to expunge and return information from an 
application must establish to the satisfaction of the Commissioner that the 
return of the information is appropriate.

(c)	Upon request by an applicant and payment of the fee specified 
in ? 1.19(b), the Office will furnish copies of an application, unless the 
application has been disposed of (see ? 1.53(e), (f) and (g)). The Office 
cannot provide or certify copies of an application that has been disposed 
of.

See,  however, MPEP ?  201.14(c),  ? 604.04(a),  and  
? 724.05 with regard to the return of papers.  Copies of an 
application will be provided by the PTO upon request and 
payment of the fee set forth in 37 CFR 1.19(b) unless the 
application has been disposed of (see  37 CFR *>1.53(e)<, 
(f) and (g)).

All applicants are requested to include a preliminary 
classification on newly filed patent applications. The pre-
liminary classification, preferably class and subclass desig-
nations, should be identified in the upper right-hand corner 
of the letter of transmittal accompanying the application 
papers, for example "Proposed Class 2, subclass 129." 

601.01	Complete Application 

37 CFR 1.53.  Application  number, filing date, and completion of 
application.

(a)	Application number.  Any papers received in the Patent and 
Trademark Office which purport to be an application for a patent will be 
assigned an application number for identification purposes.

(b)	Application filing requirements - Nonprovisional application.  
The filing date of an application for patent filed under this section, except 
for a provisional application under paragraph (c) of this section or a con-
tinued prosecution application under paragraph (d) of this section, is the 
date on which a specification as prescribed by  35 U.S.C. 112 containing a 
description pursuant to ? 1.71 and at least one claim pursuant to ? 1.75, 
and any drawing required by ? 1.81(a) are filed in the Patent and Trade-
mark Office.  No new matter may be introduced into an application after 
its filing date. A continuing application, which may be a continuation, 
divisional, or continuation-in-part application, may be filed under the con-
ditions specified in  35 U.S.C. 120, 121 or 365(c) and ? 1.78(a).

(1)	A continuation or divisional application that names as inven-
tors the same or fewer than all of the inventors named in the prior applica-
tion may be filed under this paragraph or paragraph (d) of this section.

(2)	A continuation-in-part application (which may disclose and 
claim subject matter not disclosed in the prior application  or a continua-
tion or divisional application naming an inventor not named in the prior 
application must be filed under this paragraph.

(c)	Application filing  requirements - Provisional application.  The 
filing date of a provisional application is the date on which a specification 
as prescribed by the first paragraph of  35 U.S.C. 112, and any drawing 
required by ? 1.81(a) are filed in the Patent and Trademark Office.  No 
amendment, other than to make the provisional application comply with 
the patent statute and all applicable regulations, may be made to the provi-
sional application after the filing date of the provisional application.

(1)	A provisional application must also include the cover sheet 
required by ? 1.51(c)(1) or a cover letter identifying the application as a 
provisional application. Otherwise, the application will be treated as an 
application filed under paragraph (b) of this section.

(2)	An application for patent filed under paragraph (b) of this 
section may be converted to a provisional application and be accorded the 
original filing date of the application filed under paragraph (b) of this sec-
tion,

(i)	Provided that a petition requesting the conversion, with 
the fee set forth in ? 1.17(q), is filed prior to the earliest of:

(A)	Abandonment of the application filed under para-
graph (b) of this section;

(B)	Payment of the issue fee on the application filed 
under paragraph (b) of this section;

(C)	Expiration of twelve months after the filing date of 
the application filed under paragraph (b) of this section; or

(D)	The filing of a request for a statutory invention regis-
tration under ? 1.293 in the application filed under paragraph (b) of this 
section.

(ii)	The grant of any such petition will not entitle applicant 
to a refund of the fees which were properly paid in the application filed 
under paragraph (b) of this section.

(3)	A provisional application is not entitled to the right of prior-
ity under  35 U.S.C. 119 or 365(a) or ? 1.55, or to the benefit of an earlier 
filing date under  35 U.S.C. 120, 121 or 365(c) or ? 1.78 of any other 
application.  No claim for priority under ? 1.78(a)(3) may be made in a 
design application based on a provisional application.  No request under 
? 1.293 for a statutory invention registration may be filed in a provisional 
application.  The requirements of ?? 1.821 through 1.825 regarding appli-
cation disclosures containing nucleotide and/or amino acid sequences are 
not mandatory for provisional applications.

(d)	Application filing requirements - Continued prosecution (non-
provisional) application.  

(1)	A continuation or divisional application (but not a continua-
tion-in-part) of a prior nonprovisional application may be filed as a contin-
ued prosecution application under this paragraph, provided that:

(i)	The prior nonprovisional application is either:

(A)	Complete as defined by ? 1.51(b) ; or 

(B)	The national stage of an international application in 
compliance with  35 U.S.C. 371; and

(ii)	The application under this paragraph is filed before the 
earliest of:

(A)	Payment of the issue fee on the prior application, 
unless a petition under ? 1.313(b)(5) is granted in the prior application;

(B)	Abandonment of the prior application; or

(C)	Termination of proceedings on the prior application.

(2)	The filing date of a continued prosecution application is the 
date on which a request on a separate paper for an application under this 
paragraph is filed.  An application filed under this paragraph:

(i)	Must identify the prior application;

(ii)	Discloses and claims only subject matter disclosed in the 
prior application;

(iii)	Names as inventors the same inventors named in the 
prior application on the date the application under this paragraph was 
filed, except as provided in paragraph (d)(4) of this section;

(iv)	Includes the request for an application under this para-
graph, will utilize the file jacket and contents of the prior application, 
including the specification, drawings and oath or declaration from the 
prior application, to constitute the new application, and will be assigned 
the application number of the prior application for identification purposes; 
and

(v)	Is a request to expressly abandon the prior application as 
of the filing date of the request for an application under this paragraph.

(3)	The filing fee for a continued prosecution application filed 
under this paragraph is:

(i)	The basic filing fee as set forth in ? 1.16; and

(ii)	Any additional ? 1.16 fee due based on the number of 
claims remaining in the application after entry of any amendment accom-
panying the request for an application under this paragraph and entry of 
any amendments under ? 1.116 unentered in the prior application which 
applicant has requested to be entered in the continued prosecution applica-
tion.

(4)	An application filed under this paragraph may be filed by 
fewer than all the inventors named in the prior application, provided that 
the request for an application under this paragraph when filed is accompa-
nied by a statement requesting deletion of the name or names of the person 
or persons who are not inventors of the invention being claimed in the new 
application. No person may be named as an inventor in an application 
filed under this paragraph who was not named as an inventor in the prior 
application on the date the application under this paragraph was filed, 
except by way of a petition under ? 1.48.

(5)	Any new change must be made in the form of an amendment 
to the prior application as it existed prior to the filing of an application 
under this paragraph.  No amendment in an application under this para-
graph (a continued prosecution application) may introduce new matter or 
matter that would have been new matter in the prior application. Any new 
specification filed with the request for an application under this paragraph 
will not be considered part of the original application papers, but will be 
treated as a substitute specification in accordance with ? 1.125.

(6)	The filing of a continued prosecution application under this 
paragraph will be construed to include a waiver of confidentiality by the 
applicant under  35 U.S.C. 122 to the extent that any member of the pub-
lic, who is entitled under the provisions of ? 1.14 to access to, copies of, or 
information concerning either the prior application or any continuing 
application filed under the provisions of this paragraph, may be given sim-
ilar access to, copies of, or similar information concerning the other appli-
cation or applications in the file jacket.

(7)	A request for an application under this paragraph is the spe-
cific reference required by  35 U.S.C. 120 to every application assigned 
the application number identified in such request.  No amendment in an 
application under this paragraph may delete this specific reference to any 
prior application.

(8)	In addition to identifying the application number of the prior 
application, applicant should furnish in the request for an application 
under this paragraph the following information relating to the prior appli-
cation to the best of his or her ability:

(i)	Title of invention;

(ii)	Name of applicant(s); and

(iii)	Correspondence address.

(9)	Envelopes containing only requests and fees for filing an 
application under this paragraph should be marked "Box CPA."  Requests 
for an application under this paragraph filed by facsimile transmission 
should be clearly marked "Box CPA."

(e)	Failure to meet filing date requirements.

(1)	If an application deposited under paragraph (b), (c), or (d) of 
this section does not meet the requirements of such paragraph to be enti-
tled to a filing date, applicant will be so notified, if a correspondence 
address has been provided, and given a time period within which to cor-
rect the filing error.

(2)	Any request for review of a notification pursuant to para-
graph (e)(1) of this section, or a notification that the original application 
papers lack a portion of the specification or drawing(s), must be by way of 
a petition pursuant to this paragraph. Any petition under this paragraph 
must be accompanied by the fee set forth in ? 1.17(i) in an application 
filed under paragraphs (b) or (d) of this section, and the fee set forth in 
? 1.17(q) in an application filed under paragraph (c) of this section.  In the 
absence of a timely (? 1.181(f)) petition pursuant to this paragraph, the fil-
ing date of an application in which the applicant was notified of a filing 
error pursuant to paragraph (e)(1) of this section will be the date the filing 
error is corrected.

(3)	If an applicant is notified of a filing error pursuant to para-
graph (e)(1) of this section, but fails to correct the filing error within the 
given time period or otherwise timely (? 1.181(f)) take action pursuant to 
this paragraph, proceedings in the application will be considered termi-
nated. Where proceedings in an application are terminated pursuant to this 
paragraph, the application may be disposed of, and any filing fees, less the 
handling fee set forth in ? 1.21(n), will be refunded.

(f)	Completion of application subsequent to filing - Nonprovisional 
(including continued prosecution) application. If an application which has 
been accorded a filing date pursuant to paragraph (b) of this section, 
including a continuation, divisional, or continuation-in-part application, 
does not include the appropriate filing fee or an oath or declaration by the 
applicant pursuant to ? 1.63 or ? 1.175, or, if an application which has 
been accorded a filing date pursuant to paragraph (d) of this section does 
not include the appropriate filing fee, applicant will be so notified, if a cor-
respondence address has been provided, and given a period of time within 
which to file the fee, oath or declaration, and the surcharge as set forth in 
? 1.16(e) in order to prevent abandonment of the application. See 
? 1.63(d) concerning the submission of a copy of the oath or declaration 
from the prior application for a continuation or divisional application. If 
the required filing fee is not timely paid, or if the processing and retention 
fee set forth in ? 1.21(l) is not paid within one year of the date of mailing 
of the notification required by this paragraph, the application may be dis-
posed of. The notification pursuant to this paragraph may be made simul-
taneously with any notification pursuant to paragraph (e) of this section.  
If no correspondence address is included in the application, applicant has 
two months from the filing date to file the basic filing fee, the oath or dec-
laration in an application under paragraph (b) of this section, and the sur-
charge as set forth in ? 1.16(e) in order to prevent abandonment of the 
application; or, if no basic filing fee has been paid, one year from the filing 
date to pay the processing and retention fee set forth in ? 1.21(l) to prevent 
disposal of the application.

(g)	Completion of application subsequent to filing -Provisional 
application. If a provisional application which has been accorded a filing 
date pursuant to paragraph (c) of this section does not include the appro-
priate filing fee or the cover sheet required by ? 1.51(c)(1), applicant will 
be so notified, if a correspondence address has been provided, and given a 
period of time within which to file the fee, cover sheet, and the surcharge 
as set forth in ? 1.16(l) in order to prevent abandonment of the application.  
If the required filing fee is not timely paid, the application may be dis-
posed of.  The notification pursuant to this paragraph may be made simul-
taneously with any notification pursuant to paragraph (e) of this section.  
If no correspondence address is included in the application, applicant has 
two months from the filing date to file the basic filing fee, cover sheet, and 
the surcharge as set forth in ? 1.16(l) in order to prevent abandonment of 
the application.

(h)	Subsequent treatment of application - Nonprovisional (includ-
ing continued prosecution) application.  An application for a patent filed 
under paragraphs (b) or (d) of this section will not be placed on the files 
for examination until all its required parts, complying with the rules relat-
ing thereto, are received, except that certain minor informalities may be 
waived subject to subsequent correction whenever required.

(i)	Subsequent treatment of application - Provisional application.  
A provisional application for a patent filed under paragraph (c) of this sec-
tion will not be placed on the files for examination and will become aban-
doned no later than twelve months after its filing date pursuant to  
35 U.S.C. 111(b)(1).

(j)	Filing date of international application. The filing date of an 
international application designating the United States of America is 
treated as the filing date in the United States of America under PCT Arti-
cle 11(3), except as provided in  35 U.S.C. 102(e).

37 CFR 1.53 relates to application numbers, filing dates, 
and completion of applications.  37 CFR 1.53(a) indicates 
that an application number is assigned for identification 
purposes to any paper which purports to be an application 
for a patent, even if the application is incomplete or infor-
mal. The remaining sections of  37 CFR 1.53 treat nonpro-
visional applications filed under  35 U.S.C. 111(a) 
separately from provisional applications filed under  
35 U.S.C. 111(b).

37 CFR 1.53(d) sets forth the filing date requirements 
for a continued prosecution application (CPA).  A CPA is a 
nonprovisional application which must be filed on or after 
December 1, 1997.  Only a continuation or divisional appli-
cation (but not a continuation-in-part) may be filed as a 
CPA.  See  MPEP ? 201.06(d).

601.01(a)	Nonprovisional Applications Filed 
Under 35 U.S.C. 111(a) [R-1]

The procedure for filing a nonprovisional application 
under  35 U.S.C. 111(a) 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, divi-
sional, or continuation-in-part. Under 37 CFR 1.53(b), a fil-
ing 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 Patent and 
Trademark Office.  Failure to meet any of the requirements 
in  37 CFR 1.53(b) will result in the application being 
denied a filing date.  The filing date to be accorded such an 
application is the date on which all of the requirements of  
37 CFR 1.53(b) are met.

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 prior nonprovisional application.  The prior nonprovi-
sional application must be either (1) complete as defined by  
37 CFR 1.51(b), or (2) the national stage of an international 
application in compliance with  35 U.S.C. 371.  Any appli-
cation filed under  37 CFR 1.53(d) must disclose and claim 
only subject matter disclosed in the prior nonprovisional 
application and must name as inventors the same or less 
than all of the inventors named in the prior nonprovisional 
application.  Under 37 CFR 1.53(d), the filing date assigned 
is the date on which a request, on a separate paper, for an 
application under  37 CFR 1.53(d) is filed.  An application 
filed under  37 CFR 1.53(d) must be filed before the earli-
est of:  

(A)	payment of the issue fee on the prior application, 
unless a petition under  37 CFR 1.313(b)(5) is granted in 
the prior application; 

(B)	abandonment of the prior application; or 

(C)	termination of proceedings on the prior applica-
tion.

The filing 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 submit-
ted after the filing date.  However, no amendment may 
introduce new matter into the disclosure of an application 
after its filing date.

37 CFR 1.53(e) provides for notifying applicant of any 
application which is incomplete under 37 CFR 1.53(b) or  
37 CFR 1.53(d) and giving the applicant a time period to 
correct any omission.  If the omission is not corrected 
within the time period given, the application will be 
returned or otherwise disposed of and a handling fee set 
forth in  37 CFR 1.21(n) will be retained from any refund 
of a filing fee.

37 CFR 1.53(f) provides that, where a filing date has 
been assigned to an application filed under  37 CFR 1.53(b) 
or  37 CFR 1.53(d), the applicant will be notified if a corre-
spondence address has been provided and be given a period 
of time in which to file the missing fee, oath or declaration, 
and to pay the surcharge due in order to prevent abandon-
ment of the application.  The time period usually set is 2 
months from the date of notification by the Patent and 
Trademark Office.  This time period may be extended 
under  37 CFR 1.136(a).

If the required basic filing fee is not timely paid, or the 
processing and retention fee set forth in  37 CFR 1.21(l) is 
not paid within 1 year of the date of mailing of the notifica-
tion, the application will be disposed of. The notification 
under  37 CFR 1.53(f) may be made simultaneously with 
any notification pursuant to 37 CFR 1.53(e).  If no corre-
spondence address is included in the application, applicant 
has 2 months from the filing date to file the fee, oath or 
declaration and to pay the surcharge as set forth in  37 CFR 
1.16(e) in order to prevent abandonment of the application 
or one year from the filing date to pay the processing and 
retention fee set forth in  37 CFR 1.21(l) to prevent disposal 
of the application. 

Copies of an application will be provided by the PTO 
upon request and payment of the fee set forth in  37 CFR 
1.19(b) unless the application has been disposed of (see  
37 CFR 1.53(e) and (f)).  The basic filing fee or the pro-
cessing and retention fee must be paid in a nonprovisional 
application, if any claim for benefits under 35 U.S.C. 
120 121, or 365(c) based on that application is made in a 
subsequently filed copending nonprovisional application. 
37 CFR 1.78(a)(1).

37 CFR 1.53(h) indicates that a patent application will 
not be forwarded for examination on the merits until all 
required parts have been received. 37 CFR 1.53(j) indicates 
that international applications filed under the Patent Coop-
eration Treaty which designate the United States of Amer-
ica are considered to have a United States filing date under 
PCT Article 11(3), except as provided in  35 U.S.C. 102(e), 
on the date the requirements of PCT Article 11(1) (i) to (iii) 
are met.

In accordance with the provisions of  35 U.S.C. 111(a) 
and  37 CFR 1.53(b), a filing date is granted to an applica-
tion for patent, which includes at least a specification con-
taining a description pursuant to  37 CFR 1.71 and at least 
one claim pursuant to 37 CFR 1.75, and any drawing 
referred to in the specification or required by  37 CFR 
1.81(a), which is filed in the Patent and Trademark Office. 
If an application which has been accorded a filing date does 
not include the appropriate filing fee or oath or declaration, 
applicant will be so notified and given a period of time 
within which to file the missing parts to complete the appli-
cation and to pay the surcharge as set forth in  37 CFR 
1.16(e) in order to prevent abandonment of the application.

Applicants should submit a copy of the notice(s) to file 
missing parts and the notice(s) of incomplete applications 
with the reply submitted to the Patent and Trademark 
Office. Applicants should also include the application num-
ber on all correspondence to the Office. These measures 
will aid the Office in matching papers to applications, 
thereby expediting the processing of applications.

In order for the Office to so notify the applicant, a corre-
spondence address must also be provided in the application. 
The address may be different from the post office address 
of the applicant. For example, the address of applicant's 
registered attorney or agent may be used as the correspon-
dence address.  If applicant fails to provide the Office with 
a correspondence address, the Office will be unable to pro-
vide applicant with notification to complete the application 
and to pay the surcharge as set forth in  37 CFR 1.16(e).  In 
such a case, applicant will be considered to have construc-
tive notice as of the filing date that the application must be 
completed within 2 months from the filing date before 
abandonment occurs per  37 CFR 1.53(f). This time period 
may be extended pursuant to  37 CFR 1.136.

The oath or declaration filed in reply to such a notice 
under  37 CFR 1.53(f) must be executed by the inventors 
and must identify the specification and any amendment 
filed with the specification which is intended to be part of 
the original disclosure.  If an amendment is filed with the 
oath or declaration filed after the filing date of the applica-
tion, it may be identified in the oath or declaration but may 
not include new matter.  No new matter may be included 
after the filing date of the application. See MPEP 
? 608.04(b).  If the oath or declaration improperly refers to 
an amendment containing new matter, a supplemental oath 
or declaration will be required pursuant to  37 CFR 1.67(b), 
deleting the reference to the amendment containing new 
matter.  If an amendment is filed on the same day that the 
application filed under  37 CFR 1.53(b) is filed and is 
referred to in the original oath or declaration filed with or 
after the application, it constitutes a part of the original 
application papers and the question of new matter is not 
considered. Similarly, if the application papers are altered 
prior to execution of the oath or declaration and the filing 
of the application, new matter is not a consideration 
since the alteration is considered as part of the original dis-
closure.

An amendment which adds additional disclosure submit-
ted with a request for a continuation-in-part application 
filed prior to December 1, 1997 under former  37 CFR 1.62 
is automatically considered a part of the original disclosure 
of the application by virtue of the rule. Therefore, the oath 
or declaration filed in such an application must identify the 
amendment adding additional disclosure as one of the 
papers which the inventor(s) has "reviewed and under-
stands" in order to comply with  37 CFR 1.63. If the origi-
nal oath or declaration submitted in a continuation-in-part 
application filed prior to December 1, 1997 under former  
37 CFR 1.62 does not contain a reference to the amend-
ment filed with the request for an application under former  
37 CFR 1.62, the examiner must require a supplemental 
oath or declaration referring to the amendment.

37 CFR 1.63 requires that an oath or declaration identify 
the specification to which it is directed.  The declaration 
form suggested by the Office includes spaces for filling in 
the names of the inventors, title of invention, application 
number, filing date, foreign priority application information 
and United States priority application information. While 
this information should be provided, it is not essential that 
all of these spaces be filled in in order to adequately iden-
tify the specification in compliance with 37 CFR 
1.63(a)(2).

The following combinations of information supplied in 
an oath or declaration filed on the application filing date 
with a specification are acceptable as minimums for identi-
fying a specification and compliance with any one of the 
items below will be accepted as complying with identifica-
tion requirement of  37 CFR 1.63:

(A)	name of inventor(s), and reference to an attached 
specification which is both attached to the oath or declara-
tion at the time of execution and submitted with the oath or 
declaration on filing;

(B)	name of inventor(s), and attorney docket number 
which was on the specification as filed; or

(C)	name of inventor(s), and title which was on the 
specification as filed.

Filing dates are now granted on applications filed with-
out an oath or declaration in compliance with 37 CFR 1.63, 
the oath or declaration being filed later with a surcharge. 
The following combinations of information supplied in an 
oath or declaration filed after the filed date are acceptable 
as minimums for identifying a specification and compli-
ance with any one of the items below will be accepted as 
complying with the identification requirement of 37 CFR 
1.63:

(A)	application number (consisting of the series code 
and the serial number, e.g., 08/123,456);

(B)	serial number and filing date;

(C)	attorney docket number which was on the specifi-
cation as filed;

(D)	title which was on the specification as filed and 
reference to an attached specification which is both 
attached to the oath or declaration at the time of execution 
and submitted with the oath or declaration; or

(E)	title which was on the specification as filed and 
accompanied by a cover letter accurately identifying the 
application for which it was intended by either the applica-
tion number (consisting of the series code and the serial 
number, e.g., 08/123,456), or serial number and filing date. 
Absent any statement(s) to the contrary, it will be presumed 
that the application filed in the PTO is the application 
which the inventor(s) executed by signing the oath or dec-
laration.

Form Paragraphs 6.05 and 6.05.20 may be used to notify 
applicant that the oath or declaration is defective because 
the specification has not been adequately identified.  

?  6.05 Oath or Declaration Defective, Heading

The oath or declaration is defective.  A new oath or declaration in com-
pliance with  37 CFR 1.67(a) identifying this application by application 
number and filing date is required.  See  MPEP ?? 602.01 and  602.02.

The oath or declaration is defective because:

Examiner Note:

1.	One or more of the appropriate form paragraphs 6.05.01 to 6.05.20 
must follow this paragraph.

2.	If none of the form paragraphs apply, then an appropriate explana-
tion of the defect should be given immediately following this paragraph.

?  6.05.20 Specification Not Identified

The specification to which the oath or declaration is directed has not 
been adequately identified.  See  MPEP ? 601.01(a).

Examiner Note:

*This paragraph must be preceded by form paragraph 6.05.

Any specification that is filed attached to an oath or dec-
laration on a date later than the application filing date will 
not be compared with the specification submitted on filing. 
Absent any statement(s) to the contrary, the "attached" 
specification will be presumed to be a copy of the specifi-
cation and any amendments thereto  which were filed in the 
Office in order to obtain a filing date for the application.

Any variance from the above guidelines will only be 
considered upon the filing of a petition for waiver of the 
rules under  37 CFR 1.183 accompanied by a petition fee 
(37 CFR 1.17(h)).

Further an oath or declaration attached to a cover letter 
referencing an incorrect application may not become asso-
ciated with the correct application and, therefore, could 
result in the abandonment of the correct application.

Supplemental oaths or declarations in accordance 
with 37 CFR 1.67 will be required in applications in which 
the oaths or declarations are not in compliance with the 
other requirements of  37 CFR 1.63 but contain sufficient 
information to identify the specifications to which they 
apply as detailed above.

A copy, such as a photocopy or facsimile transmission, 
of an originally executed oath or declaration is acceptable 
and may be filed (see  MPEP ? 502.01). In the event that a 
copy of the original is filed, the original should be retained 
as evidence of authenticity. If a question of authenticity 
arises, the Patent and Trademark Office may require sub-
mission of the original. See  37 CFR 1.4(d)(1)(ii).

See  MPEP ? 1896 for the identification requirements for 
a declaration filed in a U.S. national stage application filed 
under  35 U.S.C. 371.

The periods of time within which applicant must com-
plete the application may be extended under the provisions 
of  37 CFR 1.136.  Applications which are not completed in 
a timely manner will be abandoned.

601.01(b)	Provisional Applications Filed 
Under 35 U.S.C. 111(b) [R-1]

A provisional application will be given a filing date in 
accordance with  37 CFR 1.53(c) as of the date the written 
description and any necessary drawings are filed in the 
Office. The filing date requirements for a provisional appli-
cation set forth in  37 CFR 1.53(c) parallel the requirements 
for a nonprovisional application set forth in  37 CFR 
1.53(b), except that no claim is required. Amendments, 
other than those required to make the provisional applica-
tion comply with applicable regulations, are not permitted 
after the filing date of the provisional application.

When the specification or drawing are omitted,  37 CFR 
1.53(e) requires that the applicant be notified and given 
a time period in which to submit the missing ele-
ment to complete the filing. **>See MPEP ?  601.01(f) and 
? 601.01(g) for treatment of applications filed without 
drawings, or filed without all figures of drawings, respec-
tively.<

37 CFR 1.53(c)(1) requires all provisional applications 
be filed with a cover sheet or cover letter identifying the 
application as a provisional application. The Office will 
treat an application as having been filed under paragraph 
(b), unless the application is clearly identified as a provi-
sional application. A provisional application, which is iden-
tified as such, but which does not have a complete cover 
sheet as required by  37 CFR 1.51(c)(1) 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 in conformance with  37 CFR 1.53(g).

When the provisional application does not have a com-
plete cover sheet or the appropriate fee, the applicant will 
be notified pursuant to  37 CFR 1.53(g) and given a time 
period in which to provide the necessary fee or cover sheet 
and to pay the surcharge as set forth in  37 CFR 1.16(l) in 
order to prevent abandonment of the application. The time 
period will usually be set at 2 months from the date of noti-
fication. This time period may be extended under 37 CFR 
1.136(a). If the filing fee is not timely paid, the provisional 
application will be disposed of. If no correspondence 
address has been provided, applicant has 2 months from the 
filing date to file the basic filing fee, cover sheet, and to pay 
the surcharge as set forth in  37 CFR 1.16(l) in order to pre-
vent abandonment of the provisional application. Copies of 
a provisional application will be provided by the PTO upon 
request and payment of the fee set forth in  37 CFR 1.19(b) 
unless the provisional application has been disposed of (see  
37 CFR 1.53(e) and (g)). 

The basic filing fee must be paid in a provisional appli-
cation, if any claim for benefits under  35 U.S.C. 119(e) 
based on that application is made in a subsequently filed 
copending nonprovisional application.  37 CFR 1.78(a)(3).

37 CFR 1.53(e)(2) requires that any request for review 
of a refusal to accord an application a filing date be made 
by way of a petition accompanied by the fee set forth in  37 
CFR 1.17(q) (see  MPEP ? 506.02).

601.01(c)	Conversion to a Provisional 
Application 

An application filed under  37 CFR 1.53(b) may be con-
verted to a provisional application in accordance with the 
procedure described in  37 CFR 1.53(c)(2). The procedure 
requires the filing of a petition requesting the conversion 
and the petition fee set forth in  37 CFR 1.17(q). Filing of 
the petition in the application is required prior to the aban-
donment of the 37 CFR 1.53(b) application, the payment of 
the issue fee, the expiration of 12 months after the filing 
date of the 37 CFR 1.53(b) application, or the filing of a 
request for a statutory invention registration under  37 CFR 
1.293, whichever event is earlier. The grant of any such 
petition does not entitle applicant to a refund of the fees 
properly paid in the application filed under  37 CFR 
1.53(b).

601.01(d)	Application Filed Without All 
Pages of Specification

The Office of Initial Patent Examination (OIPE) reviews 
application papers to determine whether all of the pages of 
specification are present in the application.  If the applica-
tion 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, OIPE 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 nonprovisional 
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 applica-
tion papers must, within 2 months from the date of the 
"Notice of Omitted Item(s)", file a petition under 37 CFR 
1.53(e) with the petition fee set forth in 37 CFR 1.17(i) 
(37 CFR 1.17(q) for a provisional application), along with 
evidence of such deposit (37 CFR 1.181(f)). The petition 
fee 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. 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, within 2 months from the date of the "Notice of 
Omitted Item(s)", file any omitted page(s) with an oath or 
declaration in compliance with  37 CFR 1.63 and 37 CFR 
1.64 referring to such page(s) and a petition under 37 CFR 
1.182 with the petition fee set forth in  37 CFR 1.17(h), 
requesting the later filing date (37 CFR 1.181(f)).  

An applicant willing to accept the application as depos-
ited in the PTO need not respond to the "Notice of Omitted 
Items," and the failure to file a petition under  37 CFR 
1.53(e) or  37 CFR 1.182 (and the required petition fee) as 
discussed above within 2 months of the date of the "Notice 
of Omitted Item(s)" (37 CFR 1.181(f)) will be treated as 
constructive acceptance by 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 page(s). Such amend-
ment should be by way of preliminary amendment submit-
ted 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, OIPE will mail a Notice 
of Incomplete Application (PTO-1123) indicating that the 
application lacks the specification required by  35 U.S.C. 
112. Applicant may file a petition under  37 CFR 1.53(e) 
with the petition fee set forth in  37 CFR 1.17(i) (37 CFR 
1.17(q) for a provisional application), asserting that:  (1) 
the missing specification was submitted; or (2) the applica-
tion papers as deposited contain an adequate written 
description under 35 U.S.C. 112.  The petition under  
37 CFR 1.53(e) must be accompanied by sufficient evi-
dence (37 CFR 1.181(b)) to establish applicant's entitle-
ment 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, appli-
cant may submit the omitted specification, including at 
least one claim in a nonprovisional application, accompa-
nied by an oath or declaration in compliance with  37 CFR 
1.63 and  37 CFR 1.64 referring to the specification being 
submitted and accept the date of such submission as the 
application filing date.

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 does not 
contain anything which can be construed as a written 
description of such claim(s), would be unusual.

In instances in which a "Notice of Incomplete Applica-
tion" has been mailed, further action by applicant is neces-
sary for the application to be accorded a filing date.  As 
such, the application will be retained in OIPE to await such 
action.  Unless applicant either completes the application or 
files a petition under  37 CFR 1.53(e) with the petition fee 
set forth in  37 CFR 1.17(i) (37 CFR 1.17(g) for a provi-
sional application), within the period set in the "Notice of 
Incomplete Application," the application will be processed 
as an incomplete application under  37 CFR 1.53(e).

In instances in which a "Notice of Omitted Items" has 
been mailed, the application will be retained in OIPE for a 
period of 2 months from the mailing date of "Notice of 
Omitted Items" to permit 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 draw-
ing(s) in a nonprovisional application and accept the date of 
such submission as the application filing date.  As an appli-
cant may, but is not required to, reply to such a "Notice of 
Omitted Items," extensions of time under 37 CFR 1.136 
will not be applicable to this 2-month time period.

Unless applicant timely files a petition under  37 CFR 
1.53(e) or  37 CFR 1.182 with the required petition fee, the 
application will maintain the filing date as of the date of 
deposit of the application papers in the PTO, and the origi-
nal 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  37 CFR 1.51(b) will 
then be forwarded to the appropriate examining group for 
examination of the application. Provisional applications 
that are complete under  37 CFR 1.51(c) will then be for-
warded to Files Repository.  The current practice for treat-
ing applications that are not complete under  37 CFR 
1.51(b) and (c) will remain unchanged (37 CFR 1.53(f) and 
(g)).

Any petition under  37 CFR 1.53(e) or 37 CFR 1.182 not 
filed within the 2-month period set in the "Notice of Omit-
ted Item(s)" may be dismissed as untimely. 37 CFR 
1.181(f). Under the adopted procedure, the PTO may 
strictly adhere to the 2-month period set forth in 37 CFR 
1.181(f), and dismiss as untimely any petition not filed 
within the 2-month period. This strict adherence to the 2-
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 the 2-month period.  It is further justified in 
instances in which 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 as:  (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, ? 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 sub-
mitting 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 a 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 mini-
mize the processing of provisional applications, the PTO 
will not grant petitions under 37 CFR 1.182 to accept omit-
ted page(s) or drawing(s) and accord an application filing 
date as of the date of such submission in provisional appli-
cations.  The applicant should simply file a new completed 
provisional application.

601.01(e)	Nonprovisional Application 
Filed Without At Least One Claim  
[R-1]

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 specifica-
tion 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 partic-
ularly pointing out and distinctly claiming the subject mat-
ter 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 1.51 [(b)], 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  35 U.S.C. 
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 applica-
tion."  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, >or is accompanied by a preliminary amend-
ment which cancels all claims and fails to simultaneously 
submit any new claim(s),< a "Notice of Incomplete Appli-
cation" will be mailed to the applicant(s) indicating that no 
filing date has been granted and setting a period for submit-
ting a claim. The filing date will be the date of receipt of at 
least one claim. See >Baxter Int'l, Inc. v. McGaw, Inc., 
149 F.3d 1321, 1333, 47 USPQ2d 1225, 1234 (Fed. Cir. 
1998);< In re Mattson, 208 USPQ 168 (Comm'r Pat. 1980). 
An oath or declaration in compliance with  37 CFR 1.63 
and  37 CFR 1.64 referring to the claim being submitted is 
also required.

As  37 CFR 1.53(c)(2) 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(c)(2) to 
convert such application into an application under  
35 U.S.C. 111(b), which does not require a claim to be enti-
tled to its date of deposit as a filing date. Such a petition, 
however, must be filed prior to the expiration of 12 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(c)(2).  See  MPEP ? 601.01(c).

The treatment of an application subsequent to the mail-
ing of a "Notice of Incomplete Application" is discussed in  
MPEP ? 601.01(d).

601.01(f)	Applications Filed Without Draw-
ings

35 U.S.C. 111(a)(2)(B) and  35 U.S.C. 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 35 U.S.C. 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 Trade-
mark Office." 35 U.S.C. 113 (first sentence) in turn pro-
vides 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 the understanding of the invention. 35 U.S.C. 113 (first 
sentence).

It has been PTO practice to treat an application that con-
tains 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 (first sentence). The 
same practice has been followed in composition applica-
tions. Other situations in which drawings are usually not 
considered necessary for the understanding of the invention 
under  35 U.S.C. 113 (first sentence) are:

(A)	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 con-
ventional character with a particular composition), unless 
significant details of structure or arrangement are involved 
in the article claims;

(B)	Articles made from a particular material or com-
position:  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 arti-
cle claims;

(C)	Laminated structures:  where the claimed inven-
tion 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

(D)	Articles, apparatus, or systems where sole distin-
guishing 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:

(1)	A hydraulic system distinguished solely by the 
use therein of a particular hydraulic fluid;

(2)	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 simply be processed for exami-
nation, so long as the application contains something that 
can be construed as a written description. A nonprovisional 
application having at least one claim, or a provisional appli-
cation having at least some disclosure, directed to the sub-
ject matter discussed above for which a drawing is usually 
not considered essential for a filing date, describing draw-
ing 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 
in  MPEP ? 601.01(g), so long as the application contains 
something that can be construed as a written description.  
In a situation in which the appropriate examining group 
determines that drawings are necessary under 35 U.S.C. 
113 (first sentence) the filing date issue will be reconsid-
ered by the PTO.  The application will be returned to the 
Office of Initial Patent Examination (OIPE) for mailing of 
a "Notice of Incomplete Application."

If a nonprovisional 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 does not have at 
least some disclosure directed to the subject matter dis-
cussed above for which a drawing is usually not considered 
essential for a filing date, and is filed without drawings, 
OIPE will mail a "Notice of Incomplete Application" indi-
cating 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.

Applicant may file a petition under  37 CFR 1.53(e) with 
the petition fee set forth in 37 CFR 1.17(i) (37 CFR 1.17(q) 
for a provisional application), asserting that (1) the draw-
ing(s) at issue was submitted, or (2) the drawing(s) is not 
necessary under 35 U.S.C. 113 (first sentence) for a filing 
date.  The petition must be accompanied by sufficient evi-
dence to establish 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 draw-
ing(s) at issue).  Alternatively, applicant may submit draw-
ing(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, OIPE will mail a "Notice of 
Incomplete Application" indicating that the application 
lacks the drawings required under  35 U.S.C. 113 (first sen-
tence).  The applicant may:  (1) promptly file a petition 
under 37 CFR 1.53(e) with the petition fee set forth in  
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  37 CFR 1.64 and accept the date of such submission as 
the application filing date. 37 CFR 1.153(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(e) asserting that drawings are unneces-
sary under  35 U.S.C. 113 (first sentence) for a filing date in 
a design application will not be found persuasive.

The treatment of an application subsequent to the mail-
ing of a "Notice of Incomplete Application" is discussed in  
MPEP ? 601.01(d).

601.01(g)	Applications Filed Without All 
Figures of Drawings [R-1]

The Office of Initial Patent Examination (OIPE) 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 the application is filed without 
all of the drawing figure(s) referred to in the specification, 
and the application contains something that can be con-
strued as a written description, at least one drawing, if nec-
essary under  35 U.S.C. 113 (first sentence), and, in a 
nonprovisional application, at least one claim, OIPE will 
mail a "Notice of Omitted Item(s)" 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.

The mailing of a "Notice of Omitted Item(s)" 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 nonprovi-
sional 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 appli-
cation papers must, within 2 months from the date of the 
"Notice of Omitted Item(s)," file a petition under  37 CFR 
1.53(e) with the petition fee set forth in  37 CFR 1.17(i) 
(37 CFR 1.17(q) for a provisional application), along with 
evidence of such deposit (37 CFR 1.181(f)).  The petition 
fee 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.  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, within 2 months from the date of the "Notice of 
Omitted Item(s)," file any omitted drawing(s) with an oath 
or declaration in compliance with 37 CFR 1.63 and  
37 CFR 1.64 referring to such drawing(s) and a petition 
under 37 CFR 1.182 with the petition fee set forth in  
37 CFR 1.17(h), requesting the later filing date (37 CFR 
1.181(f)).  

An applicant willing to accept the application as depos-
ited in the PTO need not respond to the "Notice of Omitted 
Item(s)," and the failure to file a petition under  37 CFR 
1.53(e) or  37 CFR 1.182 with the required petition fee as 
discussed above within 2 months of the date of the "Notice 
of Omitted Item(s)" (37 CFR 1.181(f)) will be treated as 
constructive acceptance by applicant of the application as 
deposited in the PTO. Amendment of the specification is 
required in a nonprovisional application to cancel all refer-
ences 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 a nonprovisional application 
to renumber the drawing figures consecutively (showing 
the proposed changes in red ink), if necessary, and amend-
ment of the specification is required to correct the refer-
ences to the drawing figures to correspond with any 
relabeled drawing figures, both in the brief and detailed 
descriptions of the drawings. Such amendment and correc-
tion 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.

The treatment of an application subsequent to the mail-
ing of a "Notice of Omitted Item(s)" is discussed in  MPEP 
? 601.01(d).

  >Applications are often filed with drawings with sev-
eral views of the invention where the views are labeled 
using a number-letter combination, e.g., Fig. 1A, Fig. 1B, 
and Fig. 1C. OIPE will not mail a "Notice of Omitted 
Item(s)" if a figure which is referred to in the specification 
by a particular number cannot be located among the draw-
ings, if the drawings include at least one figure labeled with 
that particular number in combination with a letter. 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, 
rather than an application filed without all figures of draw-
ings.< 

601.01(h)	Forms

The following forms used by the Office of Initial Patent 
Examination (OIPE) to notify applicants of defects are 
reproduced on the following pages.

"Notice of Omitted Item(s) in a Nonprovisional Applica-
tion Filed Under  37 CFR 1.53(b)," Form PTO-1669;

"Notice to File Missing Parts of Application - Filing 
Date Granted" Form PTO-1533;

"Notice of Incomplete Nonprovisional Application 
Under  37 CFR 1.53(b)," Form PTO-1123;

"Notice to File Missing Parts of Application, No Filing 
Date," Form PTO-1532;

"Notice of Informal Application" Form PTO-152; 

"Notice To File Corrected Application Papers Filing 
Date Granted,'' Form PTO-1660;

"Notice of Omitted Item(s) in a Provisional Application 
Filed Under  37 CFR 1.53(c)," Form PTO-1672.

"Notice to File Missing Parts of Provisional Application 
Filed Under  37 CFR 1.53(c) Filing Date Granted'' Form 
PTO-1627;

"Notice of Incomplete Provisional Application Under  
37 CFR 1.53(c)," Form PTO-1626;

"Notice to File Missing Parts of Provisional Application 
Filed Under  37 CFR 1.53(c), No Filing Date," Form PTO-
1628;

"Notice of Improper Application Filed Under 37 CFR 
1.60," Form PTO-1534;

"Notice to File Missing Parts of Application Filed Under  
37 CFR 1.60 Filing Date Granted;" Form PTO-1607;

"Notice to File Missing Parts of Application Filed Under  
37 CFR 1.60 No Filing Date," Form PTO-1608; and

"Notice of Improper FWC Filing Under 37 CFR 1.62 No 
Filing Date Granted," Form PTO-1673.

Form PTO-1669. Notice of Omitted Items in a Nonprovisional Application Filed Under 37 CFR 1.53(b)

Form PTO-1533. Notice to File Missing Parts of an Application

Form PTO-1123. Notice of Incomplete Nonprovisional Application Under 37 CFR 1.53(b)

Form PTO-1532. Notice to File Missing Parts of an Application

Form PTO-152. Notice of Informal Application

Form PTO-1660. Notice to File Corrected Application Papers - Filing Date Granted

Form PTO-1672. Notice of Omitted Items in a Provisional Application Filed Under 37 CFR 1.53(c)

Form PTO-1627. Notice of to File Missing Parts of Provisional Application Filed Under 37 CFR 1.53(c) - Filing Date Granted

Form PTO-1626. Notice of Incomplete Provisional Application Under 37 CFR 1.53(c)

Form PTO-1628. Notice to File Missing Parts of Provisional Application Filed Under 37 CFR 1.53(c) - No Filing Date

Form PTO-1534. Notice of Improper Application Filed Under 37 CFR 1.60

Form PTO-1607. Notice to File Missing Parts of Application Filed Under 37 CFR 1.60 - Filing Date Granted

Form PTO-1606. Notice to File Missing Parts of Application Filed Under 37 CFR 1.60 - No Filing Date

Form PTO-1673. Notice of Improper FWC Filing Under 37 CFR 1.60

601.02	Power of Attorney or Authorization 
of Agent 

The attorney's or agent's full post office address (includ-
ing ZIP code number) must be given in every power of 
attorney or authority of agent. The telephone number of the 
attorney or agent should also be included in the power. The 
prompt delivery of communications will thereby be facili-
tated.

Usually a power of attorney or authorization of agent is 
incorporated in the oath or declaration form. (See  MPEP 
? 402.)

601.03	Change of Correspondence  
Address 

Where an attorney or agent of record (or applicant, if he 
or she is prosecuting the application pro se) changes his or 
her correspondence address, he or she is responsible for 
promptly notifying the Patent and Trademark Office of the 
new correspondence address (including ZIP code number). 
The notification should also include his or her telephone 
number. A change of correspondence address may not be 
signed by an attorney or agent not of record (see  MPEP 
? 405).

Unless the correspondence address is designated as the 
address associated with a Customer Number, a  separate 
notification must be filed in each application for which a 
person is intended to receive communications from the 
Office.  See  MPEP ? 403 for Customer Number Practice.  
In those instances where a change in the correspondence 
address of a registered attorney or agent is necessary in a 
plurality of applications, the notification filed in each appli-
cation may be a reproduction of a properly executed, origi-
nal notification. The original notice may either be sent to 
the Office of Enrollment and Discipline as notification to 
the Attorney's Roster of the change of address, or may be 
filed in one of the applications affected, provided that the 
notice includes an authorization for the public to inspect 
and copy the original notice in the event one of the applica-
tions containing a copy matures into a patent and the appli-
cation containing the original paper is either pending or has 
become abandoned. Alternatively, the paper containing the 
original signature may be retained by applicant. See  MPEP 
? 502.02. The copies submitted in each affected application 
must identify where the original paper is located.

Special care should be taken in continuation or divi-
sional applications to ensure that any change of correspon-
dence address in a prior application is reflected in the 
continuation or divisional application.  For example, where 
a copy of the oath or declaration from the prior application 
is submitted for a continuation or divisional application 
filed under  37 CFR 1.53(b) and the copy of the oath or 
declaration from the prior application designates an old 
correspondence address, the Office may not recognize, in 
the continuation or divisional application, the change of 
correspondence address made during the prosecution of the 
prior application.  Applicant is required to identify the 
change of correspondence address in the continuation or 
divisional application to ensure that communications from 
the Office are mailed to the current correspondence 
address. 37 CFR 1.63(d)(4).

See  MPEP ? 711.03(c) for treatment of petitions to 
revive applications abandoned as a consequence of failure 
to timely receive an Office action addressed to the old cor-
respondence address.

The required notification of change of correspondence 
address need take no particular form. However, it should be 
provided in a manner calling attention to the fact that a 
change of address is being made. Thus, the mere inclusion, 
in a paper being filed for another purpose, of an address 
which is different from the previously provided correspon-
dence address, without mention of the fact that an address 
change is being made would not ordinarily be recognized 
or deemed as instructions to change the correspondence 
address on the file record.

The obligation (see  37 CFR 10.11) of a registered attor-
ney or agent to notify the Attorney's Roster by letter of any 
change of his or her address for entry on the register is sep-
arate from the obligation to file a notice of change of 
address filed in individual applications. See  MPEP ? 402.

601.04	National Stage Requirements of the 
United States as a Designated Office 

See MPEP Chapter 1800, especially MPEP ? 1893.01 
for requirements for entry into the national stage before the 
Designated Office or Elected Office under the Patent Coop-
eration Treaty (PCT).

602	Original Oath or Declaration  

35 U.S.C. 25.  Declaration in lieu of oath.

(a)	The Commissioner may by rule prescribe that any document to 
be filed in the Patent and Trademark Office and which is required by any 
law, rule, or other regulation to be under oath may be subscribed to by a 
written declaration in such form as the Commissioner may prescribe, such 
declaration to be in lieu of the oath otherwise required.

(b)	Whenever such written declaration is used, the document must 
warn the declarant that willful false statements and the like are punishable 
by fine or imprisonment, or both (18 U.S.C. 1001).

35 U.S.C. 26.  Effect of defective execution.

Any document to be filed in the Patent and Trademark Office and 
which is required by any law, rule, or other regulation to be executed in a 
specified manner may be provisionally accepted by the Commissioner 
despite a defective execution, provided a properly executed document  is 
submitted within such time as may be prescribed.

35 U.S.C. 115.  Oath of the applicant.

The applicant shall make oath that he believes himself to be the origi-
nal and first inventor of the process, machine, manufacture, or composi-
tion of matter, or improvement thereof, for which he solicits a patent; and 
shall state of what country he is a citizen. Such oath may be made before 
any person within the United States authorized by law to administer oaths, 
or, when made in a foreign country, before any diplomatic or consular 
officer of the United States authorized to administer oaths, or before any 
officer having an official seal and authorized to administer oaths in the for-
eign country in which the applicant may be, whose authority is proved by 
certificate of a diplomatic or consular officer of the United States, or apos-
tille of an official designated by a foreign country which, by treaty or con-
vention, accords like effect to apostilles of designated officials in the 
United States. Such oath is valid if it complies with the laws of the state or 
country where made. When the application is made as provided in the title 
by a person other than the inventor, the oath may be so varied in form that 
it can be made by him.

37 CFR 1.63.  Oath or declaration.

(a)	An oath or declaration filed under ? 1.51(b)(2) as a part of an 
application must:

(1)	Be executed in accordance with either ? 1.66 or ? 1.68;

(2)	Identify the specification to which it is directed;

(3)	Identify each inventor by:  full name, including the family 
name, and at least one given name without abbreviation together with any 
other given name or initial, and the residence, post office address and 
country of citizenship of each inventor; and

(4)	State whether the inventor is a sole or joint inventor of the 
invention claimed.

(b)	In addition to meeting the requirements of paragraph (a), the 
oath or declaration must state that the person making the oath or declara-
tion,

(1)	Has reviewed and understands the contents of the specifica-
tion, including the claims, as amended by any amendment specifically 
referred to in the oath or declaration;

(2)	Believes the named inventor or inventors to be the original 
and first inventor or inventors of the subject matter which is claimed and 
for which a patent is sought; and

(3)	Acknowledges the duty to disclose to the Office all  informa-
tion known to the person to be material to patentability as defined in 
? 1.56.

(c)	In addition to meeting the requirements of paragraphs (a) and 
(b) of this section, the oath or declaration in any application in which a 
claim for foreign priority is made pursuant to ? 1.55 must identify the for-
eign application for patent or inventor's certificate on which priority is 
claimed, and any foreign application having a filing date before that of the 
application on which priority is claimed,  by specifying the application 
number, country, day, month, and year of its filing.

(d)(1)	A newly executed oath or declaration is not required under 
? 1.51(b)(2) and ? 1.53(f) in a continuation or divisional application, pro-
vided that:

(i)	The prior nonprovisional application contained an oath or 
declaration as prescribed by paragraphs (a) through (c) of this section;

(ii)	The continuation or divisional application was filed by all or 
by fewer than all of the inventors named in the prior application;

(iii)	The specification and drawings filed in the continuation or 
divisional application contain no matter that would have been new matter 
in the prior application; and

(iv)	A copy of the executed oath or declaration filed in the prior 
application, showing the signature or an indication thereon that it was 
signed, is submitted for the continuation or divisional application.

(2)	The copy of the executed oath or declaration submitted 
under this paragraph for a continuation or divisional application must be 
accompanied by a statement requesting the deletion of the name or names 
of the person or persons who are not inventors in the continuation or divi-
sional application.

(3)	Where the executed oath or declaration of which a copy is 
submitted for a continuation or divisional application was originally filed 
in a prior application accorded status under ? 1.47, the copy of the exe-
cuted oath or declaration for such prior application must be accompanied 
by:

(i)	A copy of the decision granting a petition to accord 
? 1.47 status to the prior application, unless all inventors or legal represen-
tatives have filed an oath or declaration to join in an application accorded 
status under ? 1.47 of which the continuation or divisional application 
claims a benefit under  35 U.S.C. 120, 121, or 365(c); and

(ii)	If one or more inventor(s) or legal representative(s) who 
refused to join in the prior application or could not be found or reached has 
subsequently joined in the prior application or another application of 
which the continuation or divisional application claims a benefit under  
35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) 
or declaration(s) filed by the inventor or legal representative to join in the 
application.

(4)	Where the power of attorney (or authorization of agent) or 
correspondence address was changed during the prosecution of the prior 
application, the change in power of attorney (or authorization of agent) or 
correspondence address must be identified in the continuation or divi-
sional application.  Otherwise, the Office may not recognize in the contin-
uation or divisional application the change of power of attorney (or 
authorization of agent) or correspondence address during the prosecution 
of the prior application.

(5)	A newly executed oath or declaration must be filed in a con-
tinuation or divisional application naming an inventor not named in the 
prior application.

(e)	A newly executed oath or declaration must be filed in any con-
tinuation-in-part application, which application may name all, more, or 
fewer than all of the inventors named in the prior application. The oath or 
declaration in any continuation-in-part application must also state that the 
person making the oath or declaration acknowledges the duty to disclose 
to the Office all information known to the person to be material to patent-
ability as defined in ? 1.56 which became available between the filing date 
of the prior application and the national or PCT international filing date of 
the continuation-in-part application.

37 CFR 1.68.  Declaration in lieu of oath.

Any document to be filed in the Patent and Trademark Office and 
which is required by any law, rule, or other regulation to be under oath 
may be subscribed to by a written declaration.  Such declaration may be 
used in lieu of the oath otherwise required, if, and only if, the declarant is 
on the same document, warned that willful false statements and the like 
are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may 
jeopardize the validity of the application or any patent issuing thereon. 
The declarant must set forth in the body of the declaration that all state-
ments made of the declarant's own knowledge are true and that all state-
ments made on information and belief are believed to be true. 

18 U.S.C. 1001.  Statements or entries generally.

Whoever, in any matter within the jurisdiction of any department or 
agency of the United States knowingly and willfully falsifies, conceals, or 
covers up by any trick, scheme, or device a material fact, or makes any 
false, fictitious or fraudulent statements or representations, or makes or 
uses any false writing or document knowing the same to contain any false, 
fictitious or fraudulent statement or entry, shall be fined not more than 
$10,000 or imprisoned not more than five years, or both.

STATUTORY DECLARATIONS

Patent and Trademark Office personnel are authorized to 
accept a statutory declaration under  28 U.S.C. 1746 filed 
in the Patent and Trademark Office in lieu of an "oath" or  
declaration under  35 U.S.C. 25 and 37 CFR 1.68, provided 
that the statutory declaration otherwise complies with the 
requirements of law.

Section 1746 of Title 28 of the United States Code pro-
vides:

Whenever, under any law of the United States or  under any 
rule, regulation, order, or requirement made pursuant to  law, any 
matter is required to be supported, evidenced, established, or 
proved by sworn declaration, verification, certificate, statement, 
oath or affidavit, in writing of the person making the same (other 
than a  deposition, or an oath of office, or an oath required to be 
taken before a specified official other than notary public), such 
matter may, with like force and effect, be supported, evidenced, 
established, or proved by the unsworn declaration, certificate, 
verification, or statement, in writing of such person which is sub-
scribed by him, as true under penalty of perjury, and dated, in 
substantially the following form:

       

[1]	If executed without the United States:

       

"I declare (or certify, verify, or state) under penalty of perjury 
under the laws of the United States of America that the foregoing 
is true and correct.  Executed on (date).

       

(Signature)."

       

[2]	If executed within the United States its territories, posses-
sions, or commonwealths:

       

"I declare (or certify, verify, or state) under penalty of perjury 
that the foregoing is true and correct.   Executed on (date).

       

(Signature)."

Oaths and declarations submitted in applications filed 
after May 1, 1975 must make reference to applications for 
inventor's certificates on which priority is claimed and any 
filed prior to the filing date of an application on which pri-
ority is claimed.

A  37 CFR 1.68 declaration need not be ribboned to the 
other papers, even if signed in a country foreign to the 
United States. When a declaration is used, it is unnecessary 
to appear before any official in connection with the making 
of the declaration. It must, however, since it is an integral 
part of the application, be maintained together therewith.

By statute,  35 U.S.C. 25, the Commissioner has been 
empowered to prescribe instances when a written declara-
tion may be accepted in lieu of the oath for "any document 
to be filed in the Patent and Trademark Office".

The filing of a written declaration is acceptable in lieu of 
an original application oath that is informal.

If all foreign applications have been filed within 
12 months of the U.S. filing date, applicant is required only 
to recite the first such foreign application of which priority 
is claimed, and it should be clear that the foreign applica-
tion referred to is the first filed foreign application. The 
applicant is required to recite all foreign applications filed 
prior to the application on which priority is claimed. It is 
required to give the foreign application number and name 
of the country or office in which filed, as well as the filing 
date of the first filed foreign application.

In the oath, the jurat must be filled out, and the word  
"sole"  or  "only"  must appear if there is but one inventor, 
and  "joint" if two or more inventors.

When joint inventors execute separate oaths or declara-
tions, each oath or declaration should make reference to the 
fact that the affiant is a joint inventor together with each of 
the other inventors indicating them by name. This may be 
done by stating that he or she does verily believe himself or 
herself to be the original, first and joint inventor together 
with  "A" or "A & B, etc."  as the facts may be.

A seal is usually impressed on an oath.  See  MPEP 
? 604 and  ? 604.01 and 37 CFR 1.66.  However, oaths exe-
cuted in many states including Alabama, Louisiana, Mary-
land, Massachusetts, New Jersey, New York, Rhode Island, 
South Carolina, and Virginia need not be impressed with a 
seal.

If a claim is presented for matter not originally claimed 
or embraced in the original statement of invention in the 
specification a supplemental oath or declaration is required,  
37 CFR 1.67,  MPEP ? 603.

A provisional application does not require an oath or 
declaration to be complete. See  37 CFR 1.51(c).

The following form paragraphs may be used to indicate 
errors in the oath or declaration.

?  6.05 Oath or Declaration Defective, Heading

The oath or declaration is defective.  A new oath or declaration in com-
pliance with  37 CFR 1.67(a) identifying this application by application 
number and filing date is required.  See  MPEP ?? 602.01 and  602.02.

The oath or declaration is defective because:

Examiner Note:

1.	One or more of the appropriate form paragraphs 6.05.01 to 6.05.20 
must follow this paragraph.

2.	If none of the form paragraphs apply, then an appropriate explana-
tion of the defect should be given immediately following this paragraph.

?  6.05.01 Improper Execution

It was not executed in accordance with either  37 CFR 1.66 or 1.68.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

?  6.05.04 Sole or Joint Designation Omitted

It does not state whether the inventor is a sole or joint inventor of the 
invention claimed.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

?  6.05.05 "Reviewed and Understands" Statement Omitted

It does not state that the person making the oath or declaration has 
reviewed and understands the contents of the specification, including the 
claims, as amended by any amendment specifically referred to in the oath 
or declaration.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

?  6.05.06 Original and First Omitted

It does not state that the person making the oath or declaration believes 
the named inventor or inventors to be the original and first inventor or 
inventors of the subject matter which is claimed and for which a patent is 
sought.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

?  6.05.07 Duty To Disclose Omitted

It does not state that the person making the oath or declaration 
acknowledges the duty to disclose to the Office all information known to 
the person to be material to patentability as defined in  37 CFR 1.56.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

?  6.05.08 Identification of Foreign Applications Omitted

It does not identify the foreign application for patent or inventor's cer-
tificate on which priority is claimed pursuant to  37 CFR 1.55, and any for-
eign application having a filing date before that of the application on 
which priority is claimed, by specifying the application number, country, 
day, month and year of its filing.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

?  6.05.09 Duty To Disclose in C-I-P Omitted

It does not state that the person making the oath or declaration in a con-
tinuation-in-part application filed under the conditions specified in  
35 U.S.C. 120 which discloses and claims subject matter in addition to 
that disclosed in the prior copending application, acknowledges the duty 
to disclose to the Office all information known to the person to be material 
to patentability as defined in 37 CFR 1.56 which became available 
between the filing date of the prior application and the national or PCT 
international filing date of the continuation-in-part application.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

?  6.05.15 Not in Permanent Ink

The [1] is not in permanent ink, or its equivalent in quality, as required 
under  37 CFR 1.52(a).

Examiner Note:

1.	In bracket 1, insert either signature or oath/declaration.

2.	This paragraph must be preceded by form paragraph 6.05.

3.	If other portions of the disclosure are not in permanent ink, use form 
paragraph 6.32.

?  6.05.16 Non-Initialed/Non-Dated Alterations

Non-initialed and/or non - dated alterations have been made to the oath 
or declaration.  See  37 CFR 1.52(c).

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

?  6.05.17 Declaration Clause Omitted

The clause regarding "willful false statements ..." required by  37 CFR 
1.68 has been omitted.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

Form PTO/SB/01. Declaration for Utility or Design Patent Application (37 CFR 1.83)

602.01	Oath Cannot Be Amended 

The wording of an oath or declaration cannot be 
amended, altered or changed in any manner after it has 
been signed. If the wording is not correct or if all of the 
required affirmations have not been made, or if it has not 
been properly subscribed to, a new oath or declaration must 
be required.  However, in some cases, a deficiency in the 
oath or declaration can be corrected by a supplemental 
paper and a new oath or declaration is not necessary.

For example, if the oath does not set forth evidence that 
the notary was acting within his or her jurisdiction at the 
time he or she administered the oath, a certificate of the 
notary that the oath was taken within his or her jurisdiction 
will correct the deficiency. See  MPEP ? 602 and  ? 604.02.

Applicant may be so advised by using Form Paragraph 
6.03.

?  6.03 Oath, Declaration Cannot Be Amended

A new oath or declaration is required because [1].  The wording of an 
oath or declaration cannot be amended.  If the wording is not correct or if 
all of the required affirmations have not been made or if it has not been 
properly subscribed to, a new oath or declaration is required.  The new 
oath or declaration must properly identify the application of which it is to 
form a part, preferably by application number and filing date in the body 
of the oath or declaration.  See  MPEP ?? 602.01 and  602.02.

Examiner Note:

1.	This form paragraph is intended primarily for use in pro se applica-
tions.

2.	Use form paragraph 6.05 and one or more of form paragraphs 
6.05.01 to 6.05.20 for a defective oath or declaration in a case where there 
is a power of attorney.

602.02	New Oath or Substitute for Origi-
nal

In requiring a new oath or declaration, the examiner 
should always give the reason for the requirement and call 
attention to the fact that the application of which it is to 
form a part must be properly identified in the body of the 
new oath or declaration, preferably by giving the applica-
tion number and the date of filing.  Any one of the combi-
nations of information identified in  MPEP ?  601.01(a) as 
acceptable for an oath or declaration filed after the filing 
date may be used.

Where neither the original oath or declaration, nor the 
substitute oath or declaration is complete in itself, but the 
two taken together give all the required data, no further 
oath or declaration is needed.

602.03	Defective Oath or Declaration 

In the first Office action the examiner must point out 
every deficiency in a declaration or oath and require that 
the same be remedied. Applicant may be informed of defi-
ciencies in the declaration or oath by Form Paragraphs 6.05 
and 6.05.01 - 6.05.20.

The following Form Paragraph 6.05 must be used to 
introduce one or more of Form Paragraphs 6.05.01 - 
6.05.20, which explain errors in the oath or declaration.

?  6.05 Oath or Declaration Defective, Heading

The oath or declaration is defective.  A new oath or declaration in com-
pliance with  37 CFR 1.67(a) identifying this application by application 
number and filing date is required.  See  MPEP ?? 602.01 and  602.02.

The oath or declaration is defective because:

Examiner Note:

1.	One or more of the appropriate form paragraphs 6.05.01 to 6.05.20 
must follow this paragraph.

2.	If none of the form paragraphs apply, then an appropriate explana-
tion of the defect should be given immediately following this paragraph.

However, when an application is otherwise ready for 
issue, an examiner with full signatory authority may waive 
the following minor deficiencies:

Minor deficiencies in the body of the oath or declaration 
where the deficiencies are self-evidently cured in the rest of 
the oath or declaration, as in an oath or declaration of plural 
inventors couched in plural terms except for use of  "sole 
inventors"  is asserted.  In re Searles, 422 F.2d 431, 437, 
164 USPQ 623, 628 (CCPA 1970).

If  the above is waived, the examiner with full signatory 
authority should write in the margin of the declaration or 
oath a notation such as  "Reference to the sole inventor 
rather than joint inventors waived; Application ready for 
issue." and his or her initials and the date.

Of course, requirements of the statute, e.g., that the 
applicant state his or her citizenship or believes himself or 
herself to be the original and first inventor or that the oath 
be administered before a person authorized to administer 
oaths or that a declaration pursuant to  35 U.S.C. 25 or  
28 U.S.C. 1746 contain the language required therein, can-
not be waived.

If the defect cannot be waived, Form Paragraph 6.46 
should be used when the application is allowable.

?  6.46 Application Allowed, Substitute Declaration Needed

Applicant is now required to submit a substitute declaration or oath to 
correct the deficiencies set forth   [1].  The substitute oath or declaration 
must be filed within the THREE MONTH shortened statutory period set 
for reply in the "Notice of Allowability" (PTOL-37 or PTO-37).  Exten-
sions of time may be obtained under the provisions of  37 CFR 1.136(a).  
Failure to timely file the substitute declaration (or oath) will result in 
ABANDONMENT of the application.  The transmittal letter accompany-
ing the declaration (or oath) should indicate the following in the upper 
right hand corner: Issue Batch Number, date of the "Notice of Allowance" 
(PTOL-85), and application number.

Examiner Note:

In the bracket, insert appropriate information, e.g., --in this communi-
cation--, --in the Office action mailed ________--, or --in the PTO-152 
attached to Paper No.___--.

602.04	Foreign Executed Oath

An oath executed in a foreign country must be properly 
authenticated. See  MPEP ? 604 and 37 CFR 1.66. 

Where the authority of the foreign officer is not certified, 
Form Paragraphs 6.05 (reproduced in MPEP ?  602.03) and 
6.05.13 may be used.

?  6.05.13 Authority of Foreign Officer Not Certified

It does not include an apostille, a consular certificate, or the position of 
authority of the officer signing an apostille or consular certificate, see  
37 CFR 1.66(a).

Examiner Note:

This paragraph applies only to foreign executed oaths and must be pre-
ceded by form paragraph 6.05.

602.04(a)	Foreign Executed Oath Is 
Ribboned to Other Application 
Papers

37 CFR 1.66.  Officers authorized to administer oaths.

*****

(b)	When the oath is taken before an officer in a country foreign to 
the United States, any accompanying  application papers, except the draw-
ings, must be attached together with the oath and a ribbon passed one or 
more times through all the sheets of the application, except the drawings, 
and the ends of said ribbon brought together under the seal before the lat-
ter is affixed and impressed, or each sheet must be impressed with the offi-
cial seal of the officer before whom the oath is taken.  If the papers as filed 
are not properly ribboned or each sheet impressed with the seal, the case 
will be accepted for examination, but before it is allowed, duplicate 
papers, prepared in compliance with the foregoing sentence, must be filed.

Where the papers are not properly ribboned, use Form 
Paragraphs 6.05 (reproduced in  MPEP ? 602.03) and 
6.05.14.

?  6.05.14 No Ribbon Properly Attached

It does not have a ribbon properly attached.

Examiner Note:

This paragraph applies only to foreign executed oaths and must be pre-
ceded by form paragraph 6.05.

U.S. ACCESSION TO HAGUE CONVENTION 
ABOLISHING THE REQUIREMENT OF LEGAL-
IZATION FOR FOREIGN PUBLIC DOCUMENTS

On Oct. 15, 1981, the Hague "Convention Abolishing 
the Requirement of Legalization for Foreign Public Docu-
ments" entered into force between the United States and 28 
foreign countries as parties to the Convention. Subse-
quently, additional countries have become parties to the 
Convention.  The Convention applies to any document sub-
mitted to the United States Patent and Trademark Office for 
filing or recording, which is sworn to or acknowledged by a 
notary public in any one of the member countries. The 
Convention abolishes the certification of the authority of 
the notary public in a member country by a diplomatic or 
consular officer of the United States and substitutes certifi-
cation by a special certificate, or apostille, executed by an 
officer of the member country.  Accordingly, the Office will 
accept for filing or recording a document sworn to or  
acknowledged before a notary public in a member country 
if the document bears, or has appended to it, an apostille 
certifying the notary's authority. The requirement for a dip-
lomatic or consular certificate, specified in 37 CFR 1.66, 
will not apply to a document sworn to or acknowledged 
before a notary public in a member country if an apostille is 
used.

The member countries that are parties to the Convention 
are:

Andorra, Angola1, Anguilla, Antigua and Barbuda, 
Argentina, Armenia2, Aruba, Australia, Austria, Bahamas, 
Barbados, Belarus2, Belgium, Belize, Bermuda, Bosnia-
Herzegovina3, Botswana, British Antarctic Territory, Brit-
ish Virgin Islands, Brunei, Cayman Islands, Comoros 
Islands (formerly Moroni)1, Croatia3, Cyprus, Djibouti 
(formerly Affars and Issas)1, Dominica1, El Salvador, Falk-
land Islands, Fiji, Finland, France, French Guiana, French 
Polynesia, Guadeloupe, Germany, Gibraltar, Greece, 
Grenada1, Guernsey (Bailiwick of), Hong Kong, Hungary, 
Isle of Man, Israel, Italy, Japan, Jersey (Bailiwick of), Kiri-
bati (formerly Gilbert Islands)1, Latvia, Lesotho, Liechten-
stein, Luxembourg, Macedonia3, Malawi, Malta, Marshall 
Islands, Martinique, Mauritius, Mexico, Montserrat, 
Mozambique1, Netherlands, Netherlands Antilles (Cura-
cao, Bonaire, St. Martin, St. Eustatius and Saba), New 
Caledonia, Norway, Panama, Portugal, Reunion, Russian 
Federation2, St. Christopher (Kitts) and Nevis, St. Georgia 
and South Sandwich Islands, St. Helena, St. Lucia, St. 
Pierre and Miquelon, St. Vincent and the Grenadines, San 
Marino, Seychelles, Slovenia3, Solomon Islands (formerly 
British Solomon Islands)1, South Africa, Spain, Suriname, 
Swaziland, Switzerland, Tonga, Turkey, Turks and Caicos, 
Tuvalu (formerly Ellice Islands)1, United Kingdom, United 
States, Vanuatu (formerly New Hebrides)1, Wallis and 
Futuna.

The Convention prescribes the following form for the 
apostille:

Model of Certificate

The certificate will be in the form of a square with sides 
at least 9 centimeters long.

Note that a declaration in lieu of application oath 
(37 CFR 1.68) need not be ribboned to the other papers.  
It must, however, be maintained together therewith.

602.05	Oath or Declaration - Date of 
Execution  

The Office no longer checks the date of execution of the 
oath or declaration and the Office will no longer require a 
newly executed oath or declaration based on an oath or dec-
laration being stale (that is when the date of execution is 
more than 3 months prior to the filing date of the applica-
tion) or where the date of execution has been omitted. 
However, applicants are reminded that they have a continu-
ing duty of disclosure under  37 CFR 1.56.

602.05(a)	Oath or Declaration in 
Continuation and Divisional 
Applications [R-1]

A continuation or divisional application filed under  
37 CFR 1.53(b) (other than a continuation-in-part (CIP)) 
may be filed with a copy of the oath or declaration 
from the prior nonprovisional application. See 37 CFR 
1.63(d)(1)(iv).

A copy of an oath or declaration from a prior application 
may be submitted with a continuation or divisional applica-
tion even if the oath or declaration identifies the application 
number of the prior application.  However, if such a copy of 
the oath or declaration is filed after the filing date of the 
continuation or divisional application and an application 
number has been assigned to the continuation or divisional 
application (see 37 CFR 1.5(a)), the cover letter accompa-
nying the oath or declaration should identify the application 
number of the continuation or divisional application. The 
cover letter should also indicate that the oath or declaration 
submitted is a copy of the oath or declaration from a prior 
application to avoid the oath or declaration being incor-
rectly matched with the prior application file.  Furthermore, 
applicant should also label the copy of the oath or declara-
tion with the application number of the continuation or 
divisional application in the event that the cover letter is 
separated from the copy of the oath or declaration.

A copy of the oath or declaration from a prior nonprovi-
sional application may be filed in a continuation or divi-
sional application even if the specification for the 
continuation or divisional application is different from that 
of the prior application, in that revisions have been made to 
clarify the text or other changes have been made provided 
the changes do not constitute new matter relative to the 
prior application.  If the examiner determines that the con-
tinuation or divisional application contains new matter rela-
tive to the prior application, the examiner should >so< 
notify the applicant in the next Office action * >. The 
examiner should also (1) require< a new oath or declaration 
**>along with the< surcharge set forth in  37 CFR 1.16(e) 
**>; (2) require a petition under 37 CFR  1.182 with the 
required petition fee, requesting that the copy of the oath or 
declaration filed with the application be disregarded and 
the application be treated as an application filed without an 
oath or declaration under 37 CFR  1.53(f); and (3) indi-
cate< that the application should be redesignated as a con-
tinuation-in-part.  

A continuation or divisional application of a prior appli-
cation accorded status under  37 CFR 1.47 will be accorded 
status under  37 CFR 1.47 if a copy of the decision accord-
ing  37 CFR 1.47 status in the prior application is filed in 
the continuation or divisional application, unless an oath or 
declaration signed by all of the inventors is included upon 
filing the continuation or divisional application.  An oath or 
declaration in an application accorded status under  37 CFR 
1.47 is generally not signed by all of the inventors.  
Accordingly, if a copy of an oath or declaration of a prior 
application is submitted in a continuation or divisional 
application filed under  37 CFR 1.53(b) and the copy of the 
oath or declaration omits the signature of one or more 
inventors, the Office of Initial Patent Examination (OIPE) 
should send a "Notice to File Missing Parts" requiring the 
signature of the nonsigning inventor, unless a copy of the 
decision according status under 37 CFR 1.47 is also 
included at the time of filing of the continuation or divi-
sional application.  If OIPE mails such a Notice, a copy of 
the decision according status under 37 CFR 1.47, together 
with a surcharge under 37 CFR 1.16(e) for its late filing, 
will be an acceptable reply to the Notice.  Alternatively, 
applicant may submit an oath or declaration signed by the 
previously nonsigning inventor together with the surcharge 
set forth in  37 CFR 1.16(e) in reply to the Notice.

If an inventor named in a prior application is not an 
inventor in a continuation or divisional application filed 
under  37 CFR 1.53(b), the continuation or divisional appli-
cation may either be filed (1) with a copy of an oath or dec-
laration from a prior application and a statement requesting 
the deletion of the name or names of the person or persons 
who are not inventors of the invention being claimed in 
the continuation or divisional application (see 37 CFR 
1.63(d)), or (2) a newly executed oath or declaration nam-
ing the correct inventive entity.  If an inventor named in a 
prior application is not an inventor in a continuation or 
divisional application filed under 37 CFR 1.53(d), the 
request for filing the continuation or divisional application 
must be accompanied by a statement requesting the dele-
tion of the name or names of the person or persons who are 
not inventors of the invention being claimed in the continu-
ation or divisional application (see  37 CFR 1.53(d)(4)). 

A continuation or divisional application filed under  
37 CFR 1.53(b) of a prior application in which a petition 
under  37 CFR 1.48 to add an inventor was filed should be 
filed with a copy of the executed declaration naming the 
correct inventive entity from the prior application or a 
newly executed declaration naming the correct inventive 
entity.  A copy of any decision under  37 CFR 1.48 from the 
prior application is not required to be filed in the continua-
tion or divisional application.

602.06	Non-English Oath or Declaration 

37 CFR 1.69.  Foreign language oaths and declarations.

(a)	Whenever an individual making an oath or declaration cannot 
understand English, the oath or declaration must be in a language that such 
individual can understand and shall state that such individual understands 
the content of any documents to which the oath or declaration relates.

(b)	Unless the text of any oath or declaration in a language other 
than English is a form provided or approved by the Patent and Trademark 
Office, it must be accompanied by an English translation together with a 
statement that the translation is accurate, except that in the case of an oath 
or declaration filed under ? 1.63, the translation may be filed in the Office 
no later than two months from the date applicant is notified to file the 
translation.

37 CFR 1.69 requires that oaths and declarations be in a 
language which is understood by the individual making the 
oath or declaration, i.e., a language which the individual 
comprehends. If the individual comprehends the English 
language, he or she should preferably use it. If the individ-
ual cannot comprehend the English language, any oath or 
declaration must be in a language which the individual can 
comprehend. If an individual uses a language other than 
English for an oath or declaration, the oath or declaration 
must include a statement that the individual understands the 
content of any documents to which the oath or declaration 
relates. If the documents are in a language the individual 
cannot comprehend, the documents may be explained to 
him or her so that he or she is able to understand them.

The Office will accept a single non-English language 
oath  or declaration where there are joint inventors, of 
which only some understand English but all understand the 
non-English language of the oath or declaration.

602.07	Oath or Declaration Filed in 
United States as a Designated Office

See  MPEP ? 1893.01.

603	Supplemental Oath or Declaration 

37 CFR 1.67.  Supplemental oath or declaration.

(a)	A supplemental oath or declaration meeting the requirements of 
? 1.63 may be required to be filed to correct any deficiencies or inaccura-
cies present in an earlier filed oath or declaration.

(b)	A supplemental oath or declaration meeting the requirements of 
? 1.63 must be filed when a claim is presented for matter originally shown 
or described but not substantially embraced in the statement of invention 
or claims originally presented or when an oath or declaration submitted in 
accordance with ? 1.53(f) after the filing of the specification and any 
required drawings specifically and improperly refers to an amendment 
which includes new matter. No new matter may be introduced into a non-
provisional application after its filing date even if a supplemental oath or 
declaration is filed.  In proper situations, the oath or declaration here 
required may be made on information and belief by an applicant other than 
the inventor.

(c)	A supplemental oath or declaration meeting the requirements of 
? 1.63 must also be filed if the application was altered after  the oath or 
declaration was signed or if the oath or declaration was signed: 
(1) In blank; (2) Without review thereof by the person making the oath or 
declaration; or (3) Without review of the specification, including the 
claims, as required by ? 1.63(b)(1).

37 CFR 1.67 requires in the supplemental oath or decla-
ration substantially all the data called for in  37 CFR 1.63 
for the original oath or declaration. As to the purpose to be 
served by the supplemental oath or declaration, the exam-
iner should bear in mind that it cannot be availed of to 
introduce new matter into an application.

When an inventor who executed the original declaration 
is refusing or cannot be found to execute a required supple-
mental declaration, it is possible that the requirement may 
be suspended or waived in accordance with  37 CFR 1.183.

A new oath may be required by using Form Paragraph 
6.06.

?  6.06 New Oath for Subject Matter Not Originally Claimed

This application presents a claim for subject matter not originally 
claimed or embraced in the statement of the invention.  [1].  A supplemen-
tal oath or declaration is required under  37 CFR 1.67.  The new oath or 
declaration must properly identify the application of which it is to form a 
part, preferably by application number and filing date in the body of the 
oath or declaration.  See  MPEP ?? 602.01 and  602.02.

Examiner Note:

Explain new claimed matter in bracket 1.  The brief summary of the 
invention must be commensurate with the claimed invention and may be 
required to be modified.  See  MPEP ? 608.01(d) and  1302, and  37 CFR 
1.73.

603.01	Supplemental Oath or Declaration 
Filed After Allowance  

Since the decision in Cutter Co. v. Metropolitan Electric 
Mfg. Co., 275 F. 158 (2d Cir. 1921), many supplemental 
oaths and declarations covering the claims in the case have 
been filed after the case is allowed. Such oaths and declara-
tions may be filed as a matter of right and when received 
they will be placed in the file by the Office of Patent Publi-
cation, but their receipt will not be acknowledged to the 
party filing them. They should not be filed or considered as 
amendments under 37 CFR 1.312, since they make no 
change in the wording of the papers on file. See MPEP 
? 714.16. 

604	Administration or Execution of Oath  

37 CFR 1.66.  Officers authorized to administer oaths.

(a)	The oath or affirmation may be made before any person within 
the United States authorized by law to administer oaths. An oath made in a 
foreign country, may be made before any diplomatic or consular officer of 
the United States authorized to administer oaths, or before any officer hav-
ing an official seal and authorized to administer oaths in the foreign coun-
try in which the applicant may be, whose authority shall be proved by a 
certificate of a diplomatic or consular officer of the United States, or by an 
apostille of an official designated by a foreign country which, by treaty or 
convention, accords like effect to apostilles of designated officials in the 
United States. The oath shall be attested in all cases in this and other coun-
tries, by the proper official seal of the officer before whom the oath or 
affirmation is made. Such oath or affirmation shall be valid as to execution 
if it complies with the laws of the State or country where made. When the 
person before whom the oath or affirmation is made in this country is not 
provided with a seal, his official character shall be established by compe-
tent evidence, as by a certificate from a clerk of a court of record or other 
proper officer having a seal.

*****

See  MPEP ? 602.04(a) for foreign executed oath.

604.01	Seal 

When the person before whom the oath or affirmation is 
made in this country is not provided with a seal, his or her 
official character shall be established by competent evi-
dence, as by a certificate from a clerk of a court of record or 
other proper officer having a seal, except as noted in  
MPEP ? 604.03(a), in which situations no seal is necessary. 
When the issue concerns the authority of the person admin-
istering the oath, the examiner should require proof of 
authority. Depending on the jurisdiction, the  seal  may be 
either embossed or rubber stamped. The latter should not be 
confused with a stamped legend indicating only the date of 
expiration of the notary's commission.

See also MPEP ? 602.04(a) on foreign executed oath and 
seal.  In some jurisdictions, the seal of the notary is not 
required but the official title of the officer must be on the 
oath.  This applies to Alabama, California (certain nota-
ries), Louisiana, Maryland, Massachusetts, New Jersey, 
New York, Ohio, Puerto Rico, Rhode Island, South Caro-
lina, and Virginia.

?  6.05 Oath or Declaration Defective, Heading

The oath or declaration is defective.  A new oath or declaration in com-
pliance with  37 CFR 1.67(a) identifying this application by application 
number and filing date is required.  See  MPEP ?? 602.01 and  602.02.

The oath or declaration is defective because:

Examiner Note:

1.	One or more of the appropriate form paragraphs 6.05.01 to 6.05.20 
must follow this paragraph.

2.	If none of the form paragraphs apply, then an appropriate explana-
tion of the defect should be given immediately following this paragraph.

?  6.05.11 Notary Signature

It does not include the notary's signature, or the notary's signature is in 
the wrong place.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

?  6.05.12 Notary Seal and Venue Omitted

It does not include the notary's seal and venue.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

604.02	Venue 

That portion of an oath or affidavit indicating where the 
oath is taken is known as the venue. Where the county and 
state in the venue agree with the county and state in the 
seal, no problem arises.  If the venue and seal do not corre-
spond in county and state, the jurisdiction of the notary 
must be determined from statements by the notary appear-
ing on the oath. Venue and notary jurisdiction must corre-
spond or the oath is improper. The oath should show on its 
face that it was taken within the jurisdiction of the certify-
ing officer or notary. This may be given either in the venue 
or in the body of the jurat.  Otherwise, a new oath or decla-
ration, or a certificate of the notary that the oath was taken 
within his or her jurisdiction, must be required. Ex parte 
Delavoye, 1906 C.D. 320, 124 O.G. 626 (Comm'r Pat. 
1906);   Ex parte Irwin, 1928 C.D. 13, 367 O.G. 701 
(Comm'r Pat. 1928).

Form Paragraph 6.07 may be used where the venue is 
not shown.

?  6.07 Lack of Venue

The oath lacks the statement of venue.  Applicant is required to furnish 
either a new oath or declaration in proper form, identifying the application 
by application number and filing date, or a certificate by the officer before 
whom the original oath was taken stating that the oath was executed 
within the jurisdiction of the officer before whom the oath was taken when 
the oath was administered. The new oath or declaration must properly 
identify the application of which it is to form a part, preferably by applica-
tion number and filing date in the body of the oath or declaration.  See  
MPEP ?? 602.01 and  602.02.

Where the seal and venue differ, applicant should be 
notified by using the "Notice of Informal Application"  
form.

604.03(a)	Notarial Powers of Some 
Military Officers

Public Law 506 (81st Congress, Second Session) Article 
136: (a) The following persons on active duty in the armed 
forces . . . shall have the general powers of a notary public 
and  of a consul of the United States, in the performance of 
all notarial acts to be executed by members of any of the 
armed forces, wherever they may be, and by other persons 
subject to this code [Uniform Code of Military Justice] out-
side the continental limits of the United States:

(A)	All judge advocates of the Army and Air Force;

(B)	All law specialists;

(C)	All summary courts-martial;

(D)	All adjutants, assistant adjutants, acting adjutants, 
and personnel adjutants;

(E)	All commanding officers of the Navy and Coast 
Guard;

(F)	All staff judge advocates and legal officers, and 
acting or assistant staff judge advocates and legal officers; 
and

(G)	All other persons designated by regulations of the 
armed forces or by statute.

(H)	The signature without seal of any such person act-
ing as notary, together with the title of his office, shall be 
prima facie evidence of his authority.

604.04	Consul

On Oct. 15, 1981, the "Hague Convention Abolishing 
the Requirement of Legalization for Foreign Public Docu-
ments" entered into force between the United States and 28 
foreign countries as parties to the Convention.  Subse-
quently, additional countries have become parties to the 
conventions.  See  MPEP ? 604.04(a).

When the oath is made in a foreign country not a mem-
ber of the Hague Convention Abolishing the Requirement 
of Legalization for Foreign Public Documents, the author-
ity of any officer other than a diplomatic or consular officer 
of the United States authorized to administer oaths must be 
proved by certificate of a diplomatic or consular officer of 
the United States. See 37 CFR 1.66, MPEP ? 604. This 
proof may be through an intermediary, e.g., the consul may 
certify as to the authority and jurisdiction of another offi-
cial who, in turn, may certify as to the authority and juris-
diction of the officer before whom the oath is taken. 

604.04(a)	Consul - Omission of Certificate

Where the oath is taken before an officer in a foreign 
country other than a diplomatic or consular officer of the 
United States and whose authority is not authenticated or 
accompanied with an apostille certifying the notary's 
authority (see  MPEP ? 602.04(a)), the application is never-
theless accepted for purposes of examination. The exam-
iner, in the first Office action, should note this informality 
and require authentication of the oath by an appropriate 
diplomatic or consular officer, the filing of proper apostille, 
or a declaration (37 CFR 1.68).

Form Paragraph 6.08 may be used to notify applicant.

?  6.08 Consul-Omission of Certificate

The oath is objected to as being informal. It lacks authentication by a 
diplomatic or consular officer of the United States; 37 CFR 1.66(a).  This 
informality can be overcome either by forwarding the original oath to the 
appropriate officer for authentication or by filing either a declaration 
under 37 CFR 1.68, or a new properly authenticated oath under 37 CFR 
1.66. The new oath or declaration must properly identify the application of 
which it is to form a part, preferably by application number and filing date 
in the body of the oath or declaration. If, however, authentication of the 
original oath is desired, applicant should request return of the oath for this 
purpose.  Such request must be accompanied by an order for a copy of the 
oath to be retained in the file until the properly authenticated oath is 
returned.  After the oath has been authenticated, it should be returned 
promptly to the Patent and Trademark Office.  See MPEP ?? 602.01 and  
602.02.

At the time of the next Office action, the request for 
return of the oath, together with the application file and the 
copy of the oath, is submitted to the Group Director.  If the 
request is approved by the Group Director, the oath will be 
returned to the applicant by the examining group. A copy 
of the original oath will be retained in the file.

604.06	By Attorney in Case  

The language of  37 CFR 1.66 and  35 U.S.C. 115 is such 
that an attorney in the case is not barred from administering 
the oath as notary. The Office presumes that an attorney 
acting as notary  is cognizant of the extent of his or her  
authority and jurisdiction and will not knowingly jeopar-
dize his or her client's rights by performing an illegal act.  If 
such practice is permissible under the law of the jurisdic-
tion where the oath is administered, then the oath is a valid 
oath.

The law of the District of Columbia prohibits the admin-
istering of oaths by the attorney in the case.  If the oath is 
known to be void because of being administered by the 
attorney in a jurisdiction where the law holds this to be 
invalid, the proper action is to require a new oath or decla-
ration and refer the file to the  Office of Enrollment and 
Discipline. (Riegger v. Beierl, 1910 C.D. 12, 150 O.G. 826 
(Comm'r Pat. 1910)).  See  37 CFR 1.66 and  MPEP ? 604.

605	Applicant [R-1]

37 CFR 1.41.  Applicant for patent.

(a)	A patent is applied for in the name or names of the actual inven-
tor or inventors.

(1)	The inventorship of a nonprovisional application is that 
inventorship set forth in the oath or declaration as prescribed by ? 1.63, 
except as provided for in ? 1.53(d)(4) and ? 1.63(d).  If an oath or declara-
tion as prescribed by ? 1.63 is not filed during the pendency of a nonprovi-
sional application, the inventorship is that inventorship set forth in the 
application papers filed pursuant to ? 1.53(b), unless a petition under this 
paragraph accompanied by the fee set forth in ? 1.17(i) is filed supplying 
or changing the name or names of the inventor or inventors.

(2)	The inventorship of a provisional application is that inven-
torship set forth in the cover sheet as prescribed by ? 1.51(c)(1).  If a cover 
sheet as prescribed by ? 1.51(c)(1) is not filed during the pendency of a 
provisional application, the inventorship is that inventorship set forth in 
the application papers filed pursuant to ? 1.53(c), unless a petition under 
this paragraph accompanied by the fee set forth in ? 1.17(q) is filed sup-
plying or changing the name or names of the inventor or inventors.

(3)	In a nonprovisional application filed without an oath or dec-
laration as prescribed by ? 1.63 or a provisional application filed without a 
cover sheet as prescribed by ? 1.51(c)(1), the name or names of person or 
persons believed to be the actual inventor or inventors should be provided 
for identification purposes when the application papers pursuant to 
? 1.53(b) or (c) are filed.  If no name of a person believed to be an actual 
inventor is so provided, the application should include an applicant identi-
fier consisting of alphanumeric characters.

(b)	Unless the contrary is indicated the word  "applicant"  when 
used in these sections refers to the inventor or joint inventors who are 
applying for a patent, or to the person mentioned in ?? 1.42, 1.43, or 1.47 
who is applying for a patent in place of the inventor.

(c)	Any person authorized by the applicant may file an application 
for patent on behalf of the inventor or inventors, but an oath or declaration 
for the application (? 1.63) can only be made in accordance with ? 1.64.

(d)	A showing may be required from the person filing the applica-
tion that the filing was authorized where such authorization comes into 
question.

37 CFR 1.45.  Joint inventors.

(a)	Joint inventors must apply for a patent jointly and each must 
make the required oath or declaration; neither of them alone, nor less than 
the entire number, can apply for a patent for an invention invented by them 
jointly, except as provided in ? 1.47.

(b)	Inventors may apply for a patent jointly even though

>

(1)	They did not physically work together or at the same time,<

(2)	Each inventor did not make the same type or amount of con-
tribution, or

(3)	Each inventor did not make a contribution to the subject mat-
ter of every claim of the application.

(c)	If multiple inventors are named in a nonprovisional application, 
each named inventor must have made a contribution, individually or 
jointly, to the subject matter of at least one claim of the application and the 
application will be considered to be a joint application under 35 U.S.C. 
116. If multiple inventors are named in a provisional application, each 
named inventor must have made a contribution, individually or jointly, to 
the subject matter disclosed in the provisional application and the provi-
sional application will be considered to be a joint application under  
35 U.S.C. 116.

37 CFR 1.41 and  37 CFR 1.53 were amended effective 
December 1, 1997, to remove the requirement that the 
name(s) of the inventor(s) be identified in the application 
papers in order to accord the application a filing date. 37 
CFR 1.41(a)(1) now defines the inventorship of a nonprovi-
sional application as that inventorship set forth in the oath 
or declaration filed to comply with the requirements of  37 
CFR 1.63, except as provided for in  37 CFR 1.53(d)(3) and  
37 CFR 1.63(d).  The oath or declaration may be filed on 
the filing date of the application or on a later date.  If an 
oath or declaration is not filed during the pendency of a 
nonprovisional application, the inventorship is that inven-
torship set forth in the application papers filed pursuant to  
37 CFR 1.53(b), unless a petition under 37 CFR 1.41(a) 
accompanied by the fee set forth in 37 CFR 1.17(i) is filed 
supplying the name or names of the inventor or inventors.

Where no inventor(s) is named on filing, the Office 
requests that an alphanumeric identifier be submitted for 
the application.  The use of very short identifiers should be 
avoided to prevent confusion.  Without supplying at least a 
unique identifying name the Office may have no ability or 
only a delayed ability to match any papers submitted after 
filing of the application and before issuance of an identify-
ing application number with the application file.  Any iden-
tifier used that is not an inventor's name should be specific, 
alphanumeric characters of reasonable length, and should 
be presented in such a manner that it is clear to application 
processing personnel what the identifier is and where it is 
to be found.  It is strongly suggested that applications filed 
without an executed oath or declaration under  37 CFR 1.63 
or  37 CFR 1.175 include the name of the person(s) 
believed to be the inventor for identification purposes.  
Failure to apprise the Office of the application identifier 
being used may result in applicants having to resubmit 
papers that could not be matched with the application and 
proof of the earlier receipt of such papers where submission 
was time dependent.

For correction of inventorship, see  MPEP ? 201.03.

37 CFR 1.46.  Assigned inventions and patents.

In case the whole or a part interest in the invention or in the patent to 
be issued is assigned, the application must still be made or authorized to 
be made, and an oath or declaration signed, by the inventor or one of the 
persons mentioned in ?? 1.42, 1.43, or 1.47. However, the patent may be 
issued to the assignee or jointly to the inventor and the assignee as pro-
vided in ? 3.81.

This section concerns filing by the actual inventor. If the 
application is filed by another, see  MPEP ? 409.03.

For assignments of application by inventor, see  MPEP 
? 301. For an inventor who is dead or insane, see  MPEP 
? 409.

605.01	Applicant's Citizenship  

The statute (35 U.S.C. 115) requires an applicant, in a 
nonprovisional application, to state his or her citizenship.  
Where an applicant is not a citizen of any country, a state-
ment to this effect is accepted as satisfying the statutory 
requirement, but a statement as to citizenship applied for or 
first papers taken out looking to future citizenship in this 
(or any other) country does not meet the requirement.

Form Paragraphs 6.05 and 6.05.03 may be used to notify 
applicant that the applicant's citizenship is omitted.

?  6.05 Oath or Declaration Defective, Heading

The oath or declaration is defective.  A new oath or declaration in com-
pliance with  37 CFR 1.67(a) identifying this application by application 
number and filing date is required.  See  MPEP ?? 602.01 and  602.02.

The oath or declaration is defective because:

Examiner Note:

1.	One or more of the appropriate form paragraphs 6.05.01 to 6.05.20 
must follow this paragraph.

2.	If none of the form paragraphs apply, then an appropriate explana-
tion of the defect should be given immediately following this paragraph.

?  6.05.03 Citizenship Omitted

It does not identify the citizenship of each inventor.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05

605.02	Applicant's Residence   [R-1]

Applicant's place of residence, that is, the city and either 
state or foreign country, is required to be included in the 
oath or declaration in a nonprovisional application  for 
compliance with  37 CFR 1.63.  In the case of an applicant 
who is in one of the U.S. Armed Services, a statement to 
that effect is sufficient as to residence. For change of resi-
dence, see  MPEP ? 719.02(b). Applicant's residence must 
be included on the cover sheet for a provisional application.

If the residence is not included in the oath or declaration 
as filed, the Office of Initial Patent Examination (OIPE) 
will normally so indicate on a form PTO-152, "Notice 
of Informal Application," so as to require a new oath or 
declaration when the form is sent out with an Office action. 
If the examiner notes that the residence has not been 
included in the oath or declaration, Form Paragraphs 6.05 
(reproduced in  MPEP ? 605.01) and 6.05.02 should be 
used.

?  6.05.02 Residence Omitted

It does not identify the city and either state or foreign country of resi-
dence of each inventor.

Examiner Note:

* This paragraph must be preceded by form paragraph 6.05.

605.03	Applicant's Post Office Address

For nonprovisional applications filed prior to December 
1, 1997, each applicant's post office address was required 
by  37 CFR 1.33(a) to be supplied on the oath or declara-
tion, if not stated elsewhere in the application.  Effective 
December 1, 1997,  37 CFR 1.63 has been amended to 
require the post office address of each inventor to be stated 
in the oath or declaration.  Applicant's post office address 
means that address at which he or she customarily receives 
his or her mail. Either applicant's home or business address 
is acceptable as the post office address. The post office 
address should include the ZIP Code designation.

The object of requiring each applicant's post office 
address is to enable the Office to communicate directly 
with the applicant if desired; hence, the address of the attor-
ney with instruction to send communications to applicant in 
care of the attorney is not sufficient.

In  situations where an inventor does not execute the 
oath or declaration and the inventor is not deceased, such as 
in an application filed under  37 CFR 1.47, the inventor's 
most recent home address must be given to enable the 
Office to communicate directly with the inventor as neces-
sary.

If an oath or declaration was filed prior to December 1, 
1997 and the post office address was incomplete or omitted 
from the oath or declaration, attachment form PTO-152, 
"Notice of Informal Application" or Form Paragraph 
6.09.01 may be used to notify applicant of the deficiency of 
the post office address.

?  6.09.01 Post Office Address Omitted, Residence Given

Applicant has not given a post office address anywhere in the applica-
tion papers as required by  37 CFR 1.33(a), which was in effect at the time 
of filing of the oath or declaration. A statement over applicant's signature 
providing a complete post office address is required.

Examiner Note:

1.	This form paragraph should only be used where the Post Office 
address has been omitted in an oath or declaration filed prior to December 
1, 1997.  Use form paragraphs 6.05 and 6.05.19 if the oath or declaration 
was filed on or after December 1, 1997.

2.	If both the post office address and residence are incomplete, not uni-
form or omitted, use form paragraphs 6.05 and 6.05.02.

Oaths or declarations filed on or after December 1, 1997 
must include the post office address of each inventor.  
37 CFR 1.63(a)(3). The Office of Initial Patent Examina-
tion (OIPE) will normally indicate the omission of an 
inventor's post office address on attachment form PTO-152, 
"Notice of Informal Application," requiring a new oath or 
declaration when the form is sent out with an Office action.  
If the examiner notes that the post office address has not 
been included in an oath or declaration filed on or after 
December 1, 1997, other than a copy of an oath or declara-
tion from a prior application which complied with  37 CFR 
1.63 at the time that it was originally filed, Form Para-
graphs 6.05 (reproduced in MPEP ? 605.01) and 6.05.19 
may be used to notify applicant that the post office address 
has been omitted from the oath or declaration.

?  6.05.19 Post Office Address Omitted

It does not identify the post office address of each inventor.  A post 
office address is an address at which an inventor customarily receives his 
or her mail and may be either a home or business address. The post office 
address should include the ZIP Code designation.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

605.04(a)	Applicant's Signature and 
Name [R-1]

37 CFR 1.64.  Person making oath or declaration.

(a)	The oath or declaration must be made by all of the actual inven-
tors except as provided for in ?? 1.42, 1.43, or 1.47.

(b)	If the person making the oath or declaration is not the inventor  
(?? 1.42, 1.43, or 1.47), the oath or declaration shall state the relationship 
of the person to the inventor and, upon information and belief, the facts 
which the inventor is required to state.

EXECUTION OF OATHS OR DECLARATIONS OF  
PATENT APPLICATIONS

United States patent applications which have not been  
prepared and executed in accordance with the requirements 
of Title 35 of the United States Code and Title 37 of the 
Code of Federal Regulations may be abandoned. Although 
the statute and the rules have been in existence for many 
years, the Office continues to receive a number of applica-
tions which have been improperly executed and/or filed. 
Since the improper execution and/or filing of patent appli-
cations can ultimately result in a loss of rights, it is appro-
priate to emphasize the importance of proper execution and 
filing.

It is improper for an applicant to sign an oath or declara-
tion which is not attached to or does not identify a specifi-
cation and/or claims.

Attached does not necessarily mean that all the papers 
must be literally fastened. It is sufficient that the specifica-
tion, including the claims, and the oath or declaration 
are physically located together at the time of execution. 
Physical connection is not required. Copies of declarations 
are accepted.  See  MPEP ? 502.01 and  ? 502.02.

The provisions of 35 U.S.C. 363 for filing an interna-
tional application under the Patent Cooperation Treaty 
(PCT) which designates the United States and thereby has 
the effect of a regularly filed United States national applica-
tion, except as provided in  35 U.S.C. 102(e), are somewhat 
different than the provisions of  35 U.S.C. 111. The oath or 
declaration requirements for an international application 
before the Patent and Trademark Office are set forth in  
35 U.S.C. 371(c)(4) and  37 CFR 1.497.

37 CFR 1.52(c) states that "[a]ny interlineation, erasure, 
cancellation or other alteration of the application papers 
filed should be made on or before the signing of any 
accompanying oath or declaration pursuant to ? 1.63 refer-
ring to those application papers and should be dated and 
initialed or signed by the applicant on the same sheet of 
paper. Application papers containing alterations made after 
the signing of an oath or declaration referring to those 
application papers must be supported by a supplemental 
oath or declaration under ? 1.67(c). After the signing of the 
oath or declaration referring to the application papers, 
amendments may only be made in the manner provided by 
? 1.121."

In summary, it is emphasized that the application filed 
must be the application executed by the applicant and it is 
improper for anyone, including counsel, to alter, rewrite, or 
partly fill in any part of the application, including the oath 
or declaration, after execution of the oath or declaration by 
the applicant. This provision should particularly be brought 
to the attention of foreign applicants by their United States 
counsel since the United States law and practice in this area 
may differ from that in other countries.

Any changes made in ink in the application or oath prior 
to signing should be initialed and dated by the applicants 
prior to execution of the oath or declaration.  The Office 
will not consider whether noninitialed and/or nondated 
alterations were made before or after signing of the oath or 
declaration but will require a new oath or declaration. Form 
Paragraph 6.02.01 may be used to call noninitialed and/or 
nondated alterations to applicant's attention.

?  6.02.01 Non-Initialed and/or Non-Dated Alterations in 
Application Papers

The application is objected to because of alterations which have not 
been initialed and/or dated as is required by  37 CFR 1.52(c).  A properly 
executed oath or declaration which complies with  37 CFR 1.67(a) and 
identifies the application by application number and filing date is required.

The signing and execution by the applicant of oaths or 
declarations in certain >continuation or divisional< appli-
cations may be omitted*>. See< MPEP ? 201.06 and  
? 201.07.

For  the signature on a reply, see MPEP ? 714.01(a) to  
? 714.01(d).

>EXECUTION OF OATH OR DECLARATION ON 
BEHALF OF INVENTOR  

 The oath or declaration required by 35 U.S.C. 115 must 
be signed by all of the actual inventors, except under lim-
ited circumstances. 35 U.S.C. 116 provides that joint inven-
tors can sign on behalf of an inventor who cannot 
be reached or refuses to join. See MPEP ?  409.03(a). 
35 U.S.C. 117 provides that the legal representative of a 
deceased or incapacitated inventor can sign on behalf of the 
inventor. See MPEP ?  409.01and ?  409.02. 35 U.S.C. 118 
provides that a party with proprietary interest in the inven-
tion claimed in an application can sign on behalf of the 
inventor, if the inventor cannot be reached or refuses to join 
in the filing of the application. See MPEP ?  409.03(b) and 
?  409.03(f). The oath or declaration may not be signed by 
an attorney on behalf of the inventor, even if the attorney 
has been given a power of attorney to do so. Opinion of 
Hon. Edward Bates, 10 Op. Atty. Gen. 137 (1861). See also 
Staeger v. Commissioner of Patents and Trademarks, 
189 USPQ 272 (D.D.C. 1976) and In re Striker, 182 USPQ 
507 (PTO Solicitor 1973) (In each case, an oath or declara-
tion signed by the attorney on behalf of the inventor was 
defective because the attorney did not have a proprietary 
interest in the invention.).< 

605.04(b)	One Full Given Name Required

37 CFR 1.63(a)(3) requires that each inventor be identi-
fied by full name, including the family name, and at least 
one given name without abbreviation together with any 
other given name or initial in the oath or declaration.  For 
example, if the applicant's full name is "John Paul Doe," 
either "John P. Doe" or "J. Paul Doe" is acceptable.

Form Paragraphs 6.05 (reproduced in  MPEP ? 602.03) 
and 6.05.18 may be used to notify applicant that the oath or 
declaration is defective because the full given name of each 
inventor has not been adequately stated.

?  6.05.18 Full Given Name Is Not Set Forth

The full name of each inventor (family name and at least one given 
name together with any initial) has not been set forth.  

Examiner Note:

This paragraph must be preceded by paragraph 6.05.

In an application where the name is typewritten with a 
middle name or initial, but the signature is without such 
middle name or initial, the typewritten version of the name 
will be used. Except for correction of a typographical or 
transliteration error in the spelling of an inventor's name, a 
request to have the name changed to the signed version or 
any other corrections in the name of the inventor(s) will not 
be entertained, unless accompanied by a petition under  
37 CFR 1.182 together with an appropriate petition fee. 
The petition should be directed to the attention of the 
Office of Petitions. Upon granting of the petition, the appli-
cation should be sent to the Office of Initial Patent Exami-
nation (OIPE) for correction of its records, unless the 
application is an 09/ series application, in which case the 
application should be sent to the assigned examining group 
for correction to the PALM bib-data sheet by the examining 
group's technical support staff. If the application is 
assigned, it will be forwarded by OIPE or the examining 
group's technical support staff to the Assignment Division 
for a change in the assignment record.

When a typographical or transliteration error in the spell-
ing of an inventor's name is discovered during pendancy of 
an application, a petition is not required, nor is a new oath 
or declaration under  37 CFR 1.63 needed. The Patent and 
Trademark Office should simply be notified of the error 
and reference to the notification paper will be made on the 
previously filed oath or declaration by the Office. 

When any correction or change is effected, the file 
should be sent to OIPE for revision of its records and the 
change should be noted on the original oath or declaration 
by writing in red ink in the left column "See Paper No.  __ 
for inventorship changes.'' See MPEP ?? 201.03 and  
605.04(g).

605.04(c)	Inventor Changes Name

In cases where an inventor's name has been changed 
after the application has been filed and the inventor desires 
to change his or her name on the application, he or she must 
submit a petition under  37 CFR 1.182. The petition should 
be directed to the attention of the Office of Petitions. The 
petition must include an appropriate petition fee and an 
affidavit signed with both names and setting forth the pro-
cedure whereby the change of name was effected, or a cer-
tified copy of the court order.

If the petition is granted, the application should be sent 
to the Office of Initial Patent Examination (OIPE) for 
change of name on the file wrapper and in the PALM data-
base, unless the application is an 09/ series application, in 
which case the application should be sent to the assigned 
examining group for correction to the PALM bib-data sheet 
by the examining group's technical support staff. If the 
application is assigned, applicant should submit a corrected 
assignment document along with a cover sheet and the 
recording fee as set forth in  37 CFR 1.21(h) to the Assign-
ment Division for a change in the assignment record.

605.04(d)	Applicant Unable to Write

If the applicant is unable to write, his or her mark as 
affixed to the oath or declaration must be attested to by a 
witness.  In  the case of the oath, the notary's signature to 
the jurat is sufficient to authenticate the mark.

605.04(e)	May Use Title With Signature

It is permissible for an applicant to use a title of nobility 
or other title, such as "Dr.'', in connection with his signa-
ture. The title will not appear in the printed patent.

605.04(f)	Signature on Joint Applications - 
Order of Names 

The order of names of joint patentees in the heading of 
the patent is taken from the order in which the typewritten 
names appear in the original oath or declaration.  Care 
should therefore be exercised in selecting the preferred 
order of the typewritten names of the joint inventors, before 
filing, as requests for subsequent shifting of the names 
would entail changing numerous records in the Office. 
Since the particular order in which the names appear is of 
no consequence insofar as the legal rights of the joint appli-
cants are concerned, no changes will be made except when 
a petition under  37 CFR 1.182 is granted. The petition 
should be directed to the attention of the Office of Petitions. 
The petition to change the order of names must be signed 
by either the attorney or agent of record or all the appli-
cants. It is suggested that all typewritten and signed names 
appearing in the application papers should be in the same 
order as the typewritten names in the oath or declaration.

In those instances where the joint applicants file separate 
oaths or declarations, the order of names is taken from the 
order in which the several oaths or declarations appear in 
the application papers unless a different order is requested 
at the time of filing.

605.04(g)	Correction of Inventorship

When the Office is notified of a typographical or translit-
eration error in the spelling of an inventor's name, or a peti-
tion is granted approving a correction or a change in the 
order of the names of the inventors, or inventors are added 
or deleted under  37 CFR 1.48, the change should be noted 
in red ink in the left margin of the original oath or declara-
tion. The notation should read "See Paper No. ____ for 
inventorship changes."  The application (other than 09/ 
series applications) should be sent to the Office of Initial 
Patent Examination (OIPE) for correction on the file wrap-
per label and the PALM database regarding the inventor-
ship. A brief explanation on an "Application Division Data 
Base Routing Slip" (available from the examining group 
technical support staff) should accompany the application 
file to OIPE. For 09/ series applications, the examiner 
should have the examining group's technical support staff 
enter the correction in the PALM database and print a new 
PALM bib-data sheet, which will then be placed in the file 
wrapper.

605.05	Administrator, Executor, or Other 
Legal Representative 

In an application filed by a legal representative of the 
inventor, the specification should not be written in the first 
person.

For prosecution by administrator or executor, see  MPEP 
? 409.01(a).

For prosecution  by  heirs,  see MPEP ? 409.01(a)  and  
? 409.01(d).

For prosecution by representative of legally incapaci-
tated inventor, see  MPEP ? 409.02.

For  prosecution  by  other  than  inventor,  see MPEP 
? 409.03.

605.07	Joint Inventors  [R-1]

35 U.S.C. 116.  Inventors

When an invention is made by two or more persons jointly, they shall 
apply for patent jointly and each make the required oath, except as other-
wise provided in this title.  Inventors may apply for a patent jointly even 
though (1) they did not physically work together or at the same time, (2) 
each did not make the same type or amount of  contribution, or (3) each 
did not make a contribution to the subject matter of every claim of the 
patent.  

*****

35 U.S.C. 116, as amended by Public Law 98-622, rec-
ognizes the realities of modern team research.  A research 
project may include many inventions. Some inventions 
may have contributions made by individuals who are not 
involved in other, related inventions.

35 U.S.C. 116 allows inventors to apply for a patent 
jointly even though

(A)	they did not physically work together or at the 
same time,

(B)	each did not make the same type or amount of 
contribution, or

(C)	each did not make a contribution to the subject 
matter of every claim of the patent.

Items (A) and (B) adopt the rationale stated in decisions 
such as Monsanto Co. v. Kamp, 269 F. Supp. 818, 824, 
154 USPQ 259, 262 (D.D.C. 1967).

Item (C) adopts the rationale of cases such as SAB Indus-
trie AB v. Bendix Corp., 199 USPQ 95 (E.D. Va. 1978).

With regard to item (A), see Kimberly-Clark Corp. v.   
Procter & Gamble Distributing Co., 973 F.2d 911, 916-17, 
23 USPQ 2d 1921, 1925-26 (Fed. Cir. 1992) (some quan-
tum of collaboration or connection is required in order for 
persons to be "joint" inventors under  35 U.S.C. 116, and 
thus individuals who are completely ignorant of what each 
other has done until years after their individual independent 
efforts cannot be considered joint inventors).

Like other patent applications, jointly filed applications 
are subject to the requirements of  35 U.S.C. 121 that an 
application be directed to only a single invention.  If more 
than one invention is included in the application, the exam-
iner may require the application to be restricted to one of 
the inventions. In such a case, a "divisional" application 
complying with  35 U.S.C. 120 would be entitled to the 
benefit of the earlier filing date of the original application.

It is possible that different claims of an application or 
patent may have different dates of inventions even though 
the patent covers only one independent and distinct inven-
tion within the meaning of  35 U.S.C. 121.  When neces-
sary, the Patent and Trademark Office or a court may 
inquire of the patent applicant or owner concerning the 
inventors and the invention dates for the subject matter of 
the various claims.

GUIDELINES

37 CFR 1.45.  Joint inventors.

*****

(b)	Inventors may apply for a patent jointly even though

(1)	They did not physically work together or at the same time,

(2)	Each inventor did not make the same type or amount of con-
tribution, or

(3)	Each inventor did not make a contribution to the subject mat-
ter of every claim of the application.

(c)	If multiple inventors are named in a nonprovisional application, 
each named inventor must have made a contribution, individually or 
jointly, to the subject matter of at least one claim of the application and the 
application will be considered to be a joint application under  35 U.S.C. 
116. If multiple inventors are named in a provisional application, each 
named inventor must have made a contribution, individually or jointly, to 
the subject matter disclosed in the provisional application and the provi-
sional application will be considered to be a joint application under  
35 U.S.C. 116.

Since provisional applications may be filed without 
claims,  37 CFR 1.45(c) states that each inventor named in 
a joint provisional application must have made a contribu-
tion to the subject matter disclosed in the application.

The significant features resulting from the amendments 
to  35 U.S.C. 116 by Public Law 98-622 are the following:

(A)	The joint inventors do not have to separately  
"sign the application,"  but only need apply for the patent 
jointly and make the required oath or declaration by signing 
the same; this is a clarification, but not a change in current 
practice.

(B)	Inventors may apply for a patent jointly even 
though "they did not work together or at the same time," 
thereby clarifying (a) that it is not necessary that the inven-
tors physically work together on a project, and (b) that one 
inventor may "take a step at one time, the other an 
approach at different times." (Monsanto Co. v. Kamp, 269 
F. Supp. 818, 824, 154 USPQ 259, 262  (D.D.C. 1967)).

(C)	Inventors may apply for a patent jointly even 
though  "each did not make the same type or amount of 
contribution,"  thereby clarifying the "fact that each of the 
inventors play a different role and that the contribution of 
one may not be as great as that of another does not detract 
from the fact that the invention is joint, if each makes some 
original contribution, though partial, to the final solution of 
the problem."   Monsanto Co. v. Kamp, 269 F. Supp. at 824, 
154 USPQ at 262.

(D)	Inventors may apply for a patent jointly even 
though  "each did not make a contribution to the subject 
matter of every claim of the patent." 

(E)	Inventors may apply for a patent jointly as long as 
each inventor made a contribution, i.e., was an inventor or 
joint inventor, of the subject matter of at least one claim of 
the patent; there is no requirement that all the inventors be 
joint inventors of the subject matter of any one claim.

(F)	If an application by joint inventors includes more 
than one independent and distinct invention, restriction 
may be required with the possible result of a necessity to 
change the inventorship named in the application if the 
elected invention was not the invention of all the originally 
named inventors.

(G)	The amendment to 35 U.S.C. 116 increases the 
likelihood that different claims of an application or patent 
may have different dates of invention; when necessary the 
Office or court may inquire of the patent applicant or owner 
concerning the inventors and the invention dates for the 
subject matter of the various claims.

Pending nonprovisional applications will be permitted to 
be amended by complying with 37 CFR 1.48 to add claims 
to inventions by inventors not named when the application 
was filed as long as such inventions were disclosed in the 
application as filed since 37 CFR 1.48 permits correction of 
inventorship where the correct inventor or inventors are not 
named in an application for patent through error without 
any deceptive intention on the part of the person being 
added as an inventor.  This is specially covered in  37 CFR 
1.48(c).

Under  35 U.S.C. 116, an examiner may reject claims 
under  35 U.S.C. 102(f) only in circumstances where a 
named inventor is not the inventor of at least one claim in 
the application; no rejection under  35 U.S.C. 102(f) is 
appropriate if a named inventor made a contribution to the 
invention defined in any claim of the application.

Under 35 U.S.C. 116, considered in conjunction with 
35 U.S.C. 103(c), a rejection may be appropriate under  
35 U.S.C. 102(f)/103 where the subject matter, i.e., 
prior art, and the claimed invention were not owned by, or 
subject to an obligation of assignment to, the same person 
at the time the invention was made.

Applicants are responsible for correcting, and are 
required to correct, the inventorship in compliance with  
37 CFR 1.48 when the application is amended to change 
the claims so that one (or more) of the named inventors is 
no longer an inventor of the subject matter of a claim 
remaining in the application.

In requiring restriction in an application filed by joint 
inventors, the examiner should remind applicants of the 
necessity to correct the inventorship pursuant to  37 CFR 
1.48 if an invention is elected and the claims to the inven-
tion of one or more inventors are canceled.

The examiner should not inquire of the patent applicant 
concerning the inventors and the invention dates for the 
subject matter of the various claims until it becomes neces-
sary to do so in order to properly examine the application.

If an application is filed with joint inventors, the exam-
iner should assume that the subject matter of the various 
claims was commonly owned at the time the inventions 
covered therein were made, unless there is evidence to the 
contrary. If inventors of subject matter, not commonly 
owned at the time of the later invention, file a joint applica-
tion, applicants have an obligation pursuant to 37 CFR 1.56 
to point out the inventor and invention dates of each claim 
and the lack of common ownership at the time the later 
invention was made in order that the examiner may con-
sider the applicability of >35 U.S.C. 102(e)/103,<  
35 U.S.C. 102(f)/103 or  35 U.S.C. 102(g)/103. The exam-
iner should assume, unless there is evidence to the contrary, 
that applicants are complying with their duty of disclosure. 
It should be pointed out that  35 U.S.C. 119(a) benefit may 
be claimed to any foreign application as long as the U.S. 
named inventor was the inventor of the foreign application 
invention and 35 U.S.C. 119(a)-(d) requirements are met. 
Where two or more foreign applications are combined in a 
single U.S. application, to take advantage of the changes to  
35 U.S.C. 103 or 35 U.S.C. 116, the U.S. application may 
claim benefit under  35 U.S.C. 119(a) to each of the foreign 
applications provided all the requirements of 35 U.S.C. 
119(a)-(d) are met.  One of the conditions for benefit under  
35 U.S.C. 119(a) is that the foreign application must be for 
"the same invention" as the application in the United 
States. Therefore, a claim in the U.S. application which 
relies on the combination of prior foreign applications may 
not be entitled to the benefit under  35 U.S.C. 119(a) if the 
subject matter of the claim is not sufficiently disclosed in 
the prior foreign application.  Cf. Studiengesellschaft Kohle 
m.b.H. v. Shell Oil Co., 112 F.3d 1561, 42 USPQ2d 1674 
(Fed. Cir. 1997).  For example:

If foreign applicant A invents X and files a foreign application; 
foreign applicant B invents Y and files separate 
foreign application. A+B combine inventions X+Y and A and B 
are proper joint inventors under 35 U.S.C. 116 and file U.S. 
application to X+Y. The U.S. application may claim benefit 
under  35 U.S.C. 119(a) to each of the foreign applications pro-
vided the requirements of  35 U.S.C. 119(a)-(d) are met.

606	Title of Invention  

37 CFR 1.72.  Title and abstract.

(a)	The title of the invention, which should be as short and specific 
as possible, should appear as a heading on the first page of the specifica-
tion, if it does not otherwise appear at the beginning of the application.

*****

606.01	Examiner May Require Change 
in Title

Where the title is not descriptive of the invention 
claimed, the examiner should require the substitution of a 
new title that is clearly indicative of the invention to which 
the claims are directed. Form Paragraphs 6.11 and 6.11.01 
may be used.

?  6.11 Title of Invention Is Not Descriptive

The title of the invention is not descriptive.  A new title is required that 
is clearly indicative of the invention to which the claims are directed.

Examiner Note:

If a change in the title of the invention is being suggested by the exam-
iner, follow with form paragraph 6.11.01.

?  6.11.01 Title of Invention, Suggested Change

The following title is suggested: "  [1]"

This may result in slightly longer titles, but the loss in 
brevity of title will be more than offset by the gain in its 
informative value in indexing, classifying, searching, etc.  
If a satisfactory title is not supplied by the applicant, the 
examiner may, at the time of allowance, change the title by 
examiner's amendment or by initialing, in red ink, either the 
face of the file wrapper or, for 09/ series applications, the 
PALM bib-data sheet.

If a change in title is the only change being made by the 
examiner at the time of allowance, a separate examiner's 
amendment need not be prepared.  The change in title will 
be incorporated in the notice of allowance. This will be 
accomplished by placing an  "X"  in the designated box on 
the notice of allowance form and entering thereunder the 
title as changed by the examiner.

However, if an examiner's amendment must be prepared 
for other reasons, any change in title will be incorporated 
therein.

Inasmuch as the words "improved," "improvement of," 
and  "improvement in" are not considered as part of the title 
of an invention, the Patent and Trademark Office does not 
include these words at the beginning of the title of the  
invention. 

607	Filing Fee

Patent application filing fees are set in accordance with  
35 U.S.C. 41 and are listed in  37 CFR 1.16.

See  MPEP ? 608.01(n) for multiple dependent claims.

When filing a nonprovisional application, a basic fee 
entitles applicant to present 20 claims including not more 
than 3 claims in independent form. If claims in excess of 
the above are included at the time of filing, an additional 
fee  is required for each independent claim in excess of 
three, and a  fee is required for each claim in excess of 
20 claims (whether independent or dependent). Fees for a 
proper multiple dependent claim are calculated based on 
the number of claims to which the multiple dependent 
claim refers,  37 CFR 1.75(c), and a separate fee is required 
in each application containing a proper multiple dependent 
claim. For an improper multiple dependent claim, the fee 
charged is that charged for a single dependent claim.

Upon submission of an amendment (whether entered or 
not) affecting the claims, payment of fees for those claims 
in excess of the number previously paid for is required. 

The Office of Initial Patent Examination (OIPE) has 
been authorized to accept all applications, otherwise 
acceptable, if the basic fee is submitted, and to require pay-
ment of the deficiency within a stated period upon notifica-
tion of the deficiency.

Amendments before the first action, or not filed in reply 
to an Office action, presenting additional claims in excess 
of the number already paid for, not accompanied by the full 
additional fee due, will not be entered in whole or in part 
and applicant will be so advised. Such amendments filed in 
reply to an Office action will be regarded as not responsive 
thereto and the practice set forth in  MPEP ? 714.03 will be 
followed.

The additional fees, if any, due with an amendment are 
calculated on the basis of the claims (total and independent) 
which would be present, if the amendment were entered. 
The amendment of a claim, unless it changes a dependent 
claim to an independent claim or adds to the number of 
claims referred to in a multiple dependent claim, and the 
replacement of a claim by a claim of the same type, unless 
it is a multiple dependent claim which refers to more prior 
claims, do not require any additional fees.

For purposes of determining the fee due the Patent and 
Trademark Office, a claim will be treated as dependent if it 
contains reference to one or more other claims in the appli-
cation.  A claim determined to be dependent by this test 
will be entered if the fee paid reflects this determination.

Any claim which is in dependent form but which is so 
worded that it, in fact, is not a proper dependent claim, as 
for example it does not include every limitation of the 
claim on which it depends, will be required to be canceled  
as not being a proper dependent claim; and cancelation of 
any further claim depending on such a dependent claim will 
be similarly  required. The applicant may thereupon amend 
the claims to place them in proper dependent form, or may 
redraft them as independent claims, upon payment of any 
necessary additional fee.

After a requirement for restriction, nonelected claims 
will be included in determining the fees due in connection 
with a subsequent amendment unless such claims are can-
celed.

An amendment canceling claims accompanying the 
papers constituting the application will be effective to 
diminish the number of claims to be considered in calculat-
ing the filing fees to be paid.

The additional fees, if any, due with an amendment are 
required prior to any consideration of the amendment by 
the examiner.

Money paid in connection with the filing of a proposed 
amendment will not be refunded by reason of the nonentry 
of the amendment. However, unentered claims will not be 
counted when calculating the fee due in subsequent amend-
ments.

Amendments affecting the claims cannot serve as the 
basis for granting any refund.

See  MPEP ? 1415 for reissue application fees.

607.02	Returnability of Fees 

37 CFR 1.26.  Refunds.

(a)	Any fee paid by actual mistake or in excess of that required will 
be refunded, but a mere change of purpose after the payment of money, as 
when a party desires to withdraw an application, an appeal, or a request for 
oral hearing, will not entitle a party to demand such a return.  Amounts of 
twenty-five dollars or less will not be returned unless specifically 
requested within a reasonable time, nor will the payer be notified of such 
amounts; amounts over twenty-five dollars may be returned by check or, if 
requested, by credit to a deposit account.

(b)	[Reserved]

(c)	If the Commissioner decides not to institute a reexamination 
proceeding, a refund of $1,690 will be made to the requester of the pro-
ceeding. Reexamination requesters should indicate whether any refund 
should be made by check or by credit to a deposit account.

Since 37 CFR 1.26(a) precludes refund of an application 
filing fee when applicant desires to withdraw an applica-
tion, any request by applicant not to process or charge an 
application filing fee because the application was not 
intended to be filed must be in the form of a petition under  
37 CFR 1.183 requesting suspension of the rules to the 
extent that the filing fee not be processed or charged.  Any 
such petition must include the fee set forth in  37 CFR 
1.17(h) and must be accompanied by an express abandon-
ment of the application in accordance with  37 CFR 1.138. 
In order for such a petition to be granted, it must ordinarily 
be filed and acted upon prior to the date on which the appli-
cation filing fee is processed or charged by the Office with 
regard to the application.

All questions pertaining to the return of fees are referred 
to the Refunds Section of the Receipts Division of the 
Office of Finance. No opinions should be expressed to 
attorneys or applicants as to whether or not fees are return-
able in particular cases. Such questions may also be treated, 
to the extent appropriate, in decisions on petition decided 
by various Patent and Trademark Office officials.

608	Disclosure  

In return for a patent, the inventor gives as consideration 
a complete revelation or disclosure of the invention for 
which protection is sought. All amendments or claims must 
find descriptive basis in the original disclosure, or they 
involve new matter. Applicant may rely for disclosure upon 
the specification with original claims and drawings, as 
filed.  See also  37 CFR  1.121, subsections (a)(6) and 
(b)(2)(iii) and  MPEP ? 608.04.

If during the course of examination of a patent applica-
tion, an examiner notes the use of language that could be 
deemed offensive to any race, religion, sex, ethnic group, 
or nationality, he or she should object to the use of the lan-
guage as failing to comply with the Rules of Practice. 
37 CFR 1.3 proscribes the presentation of papers which are 
lacking in decorum and courtesy. There is a further basis 
for objection in that the inclusion of such proscribed lan-
guage in a Federal Government publication would not be in 
the public interest. Also, the inclusion in application draw-
ings of any depictions or caricatures that might reasonably 
be considered offensive to any group should be similarly 
objected to, on like authority.

The examiner should not pass the application to issue 
until   such language or drawings have been deleted, or 
questions relating to the propriety thereof fully resolved.

For design application practice, see  MPEP ? 1504. 

608.01	Specification [R-1]

35 U.S.C. 22.  Printing of papers filed.

**>The Commissioner may require papers filed in the Patent and 
Trademark Office to be printed, typewritten, or on an electronic medium.<

37 CFR 1.71.  Detailed description and specification of the  
invention.

(a)	The specification must include a written description of the 
invention or discovery and of the manner and process of making and using 
the same, and is required to be in such full, clear, concise, and exact terms 
as to enable any person skilled in the art or science to which the invention 
or discovery appertains, or with which it is most nearly connected, to 
make and use the same.

(b)	The specification must set forth the precise invention for  which 
a patent is solicited, in such manner as to distinguish it from other inven-
tions and from what is old. It must describe completely a specific embodi-
ment of the process, machine, manufacture, composition of matter or 
improvement invented, and must explain the mode of operation or princi-
ple whenever applicable. The best mode contemplated by the inventor of 
carrying out his invention must be set forth.

(c)	In the case of an improvement, the specification must particu-
larly point out the part or parts of the process, machine, manufacture, or 
composition of matter to which the improvement relates, and the descrip-
tion should be confined to the specific improvement and to such parts as 
necessarily cooperate with it or as may be necessary to a complete under-
standing or description of it.

(d)	A copyright or mask work notice may be placed in a design or 
utility patent application adjacent to copyright and mask work material 
contained therein. The notice may appear at any appropriate portion of the 
patent application disclosure. For notices in drawings, see ? 1.84(o).  The 
content of the notice must be limited to only those elements required by 
law.  For example,  "? 1983 John Doe" (17 U.S.C. 401) and "M John 
Doe" (17 U.S.C. 909) would be properly limited and, under current stat-
utes, legally sufficient notices of copyright and mask work, respectively. 
Inclusion of a copyright or mask work notice will be permitted only if the 
authorization language set forth in paragraph (e) of this section is included 
at the beginning (preferably as the first paragraph) of the specification.

(e)	The authorization shall read as follows:

A portion of the disclosure of this patent document contains 
material which is subject to {copyright or mask  work} protection. 
The {copyright or mask work} owner has no objection to the fac-
simile reproduction by anyone of the patent document or the patent 
disclosure, as it appears in the Patent and Trademark Office patent 
file or records, but otherwise reserves all {copyright or mask work} 
rights whatsoever.

 >The specification is a written description of the inven-
tion and of the manner and process of making and using the 
same. The specification must be in such full, clear, concise, 
and exact terms as to enable any person skilled in the art or 
science to which the invention pertains to make and use the 
same. See 35 U.S.C. 112 and 37 CFR 1.71. If a newly filed 
application obviously fails to disclose an invention with the 
clarity required by 35 U.S.C. 112, revision of the applica-
tion should be required. See MPEP ?  702.01.

 The specification does not require a date.<

Certain cross notes to other related applications may be 
made. References to foreign applications or to applications 
identified only by the attorney's docket number should be 
required to be canceled. See 37 CFR 1.78 and MPEP 
? 202.01.

>As the specification is never returned to applicant 
under any circumstances, the applicant should retain a line 
for line copy thereof, each line, preferably, having been 
consecutively numbered on each page. In amending, the 
attorney or the applicant requests insertions, cancellations, 
or alterations, giving the page and the line.

 Form Paragraph 7.29 may be used where the disclosure 
contains minor informalities.

?  7.29  Disclosure Objected to, Minor Informalities

 The disclosure is objected to because of the following informalities: 
[1]. Appropriate correction is required.

Examiner Note:

Use this paragraph to point out minor informalities such as spelling 
errors, inconsistent terminology, numbering of elements, etc., which 
should be corrected. See form paragraphs 6.28 to 6.32 for specific infor-
malities.

Form Paragraphs 6.29-6.31 should be used where appro-
priate.

?  6.29  Specification, Spacing of Lines

 The spacing of the lines of the specification is such as to make reading 
and entry of amendments difficult. New application papers with lines dou-
ble spaced on good quality paper are required.

?  6.30  Numerous Errors in Specification

 35 U.S.C.  112, first paragraph, requires the specification to be written 
in "full, clear, concise, and exact terms." The specification is replete with 
terms which are not clear, concise and exact. The specification should be 
revised carefully in order to comply with 35 U.S.C.  112, first paragraph. 
Examples of some unclear, inexact or verbose terms used in the specifica-
tion are: [1].

?  6.31 Lengthy Specification, Jumbo Case

 The lengthy specification has not been checked to the extent necessary 
to determine the presence of all possible minor errors. Applicant's cooper-
ation is requested in correcting any errors of which applicant may become 
aware in the specification.

Examiner Note:

This paragraph is applicable in so-called "Jumbo cases" (more than 20 
pages, exclusive of claims).

PAPER REQUIREMENTS<

37 CFR 1.52.  Language, paper, writing, margins.

(a)	The application, any amendments or corrections thereto, and the 
oath or declaration must be in the English language except as provided for 
in ? 1.69 and paragraph (d) of this section, or be accompanied by a transla-
tion of the application and a translation of any corrections or amendments 
into the English language together with a statement that the translation is 
accurate.  All papers which are to become a part of the permanent records 
of the Patent and Trademark Office must be legibly written either by a 
typewriter or mechanical printer in permanent dark ink or its equivalent in 
portrait orientation on flexible, strong, smooth, non-shiny, durable, and 
white paper. All of the application papers must be presented in a form hav-
ing sufficient clarity and contrast between the paper and the writing 
thereon to permit the direct reproduction of readily legible copies in any 
number by use of photographic, electrostatic, photo-offset, and microfilm-
ing processes and electronic reproduction by use of digital imaging and 
optical character recognition.  If the papers are not of the required quality, 
substitute typewritten or mechanically printed papers of suitable quality 
will be required.  See ? 1.125 for filing substitute typewritten or mechani-
cally printed papers constituting a substitute specification when required 
by the Office.

(b)	Except for drawings, the application papers (specification, 
including claims, abstract, oath or declaration, and papers as provided for 
in this part) and also papers subsequently filed, must have each page 
plainly written on only one side of a sheet of paper, with the claim or 
claims commencing on a separate sheet and the abstract commencing on a 
separate sheet. See ?? 1.72(b) and 1.75(h).  The sheets of paper must be 
the same size and either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. 
by 27.9 cm. (8 1/2 by 11 inches).  Each sheet must include a top margin of 
at least 2.0 cm. (3/4 inch), a left side margin of at least 2.5 cm. (1 inch), a 
right side margin of at least 2.0 cm. (3/4 inch), and a bottom margin of at 
least 2.0 cm. (3/4 inch), and no holes should be made in the sheets as sub-
mitted.  The lines of the specification, and any amendments to the specifi-
cation, must be 1 1/2 or double spaced.  The pages of the specification 
including claims and abstract must be numbered consecutively, starting 
with 1, the numbers being centrally located above or preferably, below, the 
text.  See ? 1.84 for drawings.

(c)	Any interlineation, erasure, cancellation or other alteration of 
the application papers filed should be made on or before the signing of any 
accompanying oath or declaration pursuant to ? 1.63 referring to those 
application papers and should be dated and initialed or signed by the appli-
cant on the same sheet of paper.  Application papers containing alterations 
made after the signing of an oath or declaration referring to those applica-
tion papers must be supported by a supplemental oath or declaration under 
? 1.67(c).  After the signing of the oath or declaration referring to the 
application papers, amendments may only be made in the manner pro-
vided by ? 1.121.

(d)	An application may be filed in a language other than English. 
An English translation of the non-English-language application, a state-
ment that the translation is accurate, and the fee set forth in ? 1.17(k) are 
required to be filed with the application or within such time as may be set 
by the Office.

37 CFR 1.58.  Chemical and mathematical formulae and tables.

(a)	The specification, including the claims, may contain chemical 
and mathematical formulas, but shall not contain drawings or flow dia-
grams. The description portion of the specification may contain tables; 
claims may contain tables only if necessary to conform to  35 U.S.C. 112 
or if otherwise found to be desirable.

(b)	[Reserved]

(c)	Chemical and mathematical formulae and tables must be pre-
sented in compliance with ? 1.52(a) and (b), except that chemical and 
mathematical formulae or tables may be placed in a landscape orientation 
if they cannot be presented satisfactorily in a portrait orientation.  Type-
written characters used in such formulae and tables must be chosen from a 
block (nonscript) type font or lettering style having capital letters which 
are at least 0.21 cm. (0.08 inch) high (e.g., elite type).  A space at least 
0.64 cm. (1/4 inch) high should be provided between complex formulae 
and tables and the text. Tables should have the lines and columns of data 
closely spaced to conserve space, consistent with a high degree of legibil-
ity.

37 CFR 1.52(b) requires that the pages of the specifica-
tion including claims and abstract must be numbered con-
secutively, starting with 1, the numbers being centrally 
located above or preferably, below, the text.  The lines of 
the specification, and any amendments to the specification, 
must be 1 1/2 or double spaced.

Except for drawings, all application papers (specifica-
tion, including claims, abstract, oath or declaration, and 
other papers), and also papers subsequently filed, must 
have each page plainly written on only one side of a sheet 
of paper.  The claim or claims must commence on a sepa-
rate sheet (37 CFR 1.75(h)) and the abstract must com-
mence on a separate sheet (37 CFR 1.72(b)). 

Except for drawings, all application papers which are to 
become a part of the permanent record of the Patent and 
Trademark Office must be on sheets of paper which are the 
same size and are either 21.0 cm. by 29.7 cm. (DIN size 
A4) or 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).  Each 
sheet must include a top margin of at least 2.0 cm. (3/4 
inch), a left side margin of at least 2.5 cm. (1 inch), a right 
side margin of at least 2.0 cm. (3/4 inch), and a bottom mar-
gin of at least 2.0 cm. (3/4 inch), and no holes should be 
made in the sheets as submitted. 

Applicants must make every effort to file patent applica-
tions in a form that is clear and reproducible. If the papers 
are not of the required quality, substitute typewritten or 
mechanically printed papers of suitable quality will be 
required. See  37 CFR 1.125 for filing substitute typewrit-
ten or mechanically printed papers constituting a substitute 
specification required by the Office. >See also MPEP 
? 608.01(q).< All papers which are to become a part of the 
permanent records of the Patent and Trademark Office 
must be legibly written either by a typewriter or mechanical 
printer in permanent dark ink or its equivalent in portrait 
orientation on flexible, strong, smooth, nonshiny, durable, 
and white paper. Typed, mimeographed, xeroprinted, multi-
graphed or nonsmearing carbon copy forms of reproduction 
are acceptable.

Where an application is filed with papers that do not 
comply with  37 CFR 1.52(a) or (b), the Office of Initial 
Patent Examination will mail a "Notice to File Corrected 
Application Papers" (PTO 1660) indicating the deficiency 
and setting a time period within which the applicant must 
correct the deficiencies to avoid abandonment.  The failure 
to submit application papers in compliance with  37 CFR 
1.52(a) or (b) does not effect the grant of a filing date, and 
original application papers that do not comply with  
37 CFR 1.52(a) or (b) will be retained in the application file 
as the original disclosure of the invention. The PTO will not 
return papers simply because they do not comply with  
37 CFR 1.52(a) or (b).

Legibility includes ability to be photocopied and photo-
micrographed so that suitable reprints can be made and 
ability to be electronically reproduced by use of digital 
imaging and optical character recognition.. This requires a 
high contrast, with black lines and a white background. 
Gray lines and/or a gray background sharply reduce photo 
reproduction quality. Legibility of some application papers 
may become impaired due to abrasion or aging of the 
printed material during examination and ordinary handling 
of the file. It may be necessary to require that legible and 
permanent copies be furnished at later stages after filing, 
particularly when preparing for issue.

Some of the patent application papers received by the 
Patent and Trademark Office are copies of the original, rib-
bon copy. These are acceptable if, in the opinion of the 
Office, they are legible and permanent.

The paper used must have a surface such that amend-
ments may be written thereon in ink.  So-called "Easily 
Erasable" paper having a special coating so that erasures 
can be made more easily may not provide a "permanent" 
copy, 37 CFR 1.52(a). If a light pressure of an ordinary 
(pencil) eraser removes the imprint, the examiner should, 
as soon as this becomes evident, notify applicant by use of 
Form Paragraph 6.32 that it will be necessary for applicant 
to order a copy of the specification and claims to be made 
by the Patent and Trademark Office at the applicant's 
expense for incorporation in the file.  It is not necessary to 
return this copy to applicant for signature.

?  6.32 Application on Easily Erasable Paper

The application papers are objected to because they are not a perma-
nent copy as required by  37 CFR 1.52(a).  Reference is made to   [1].

Applicant is required either (1) to submit permanent copies of the iden-
tified parts or (2) to order a photocopy of the above identified parts to be 
made by the Patent and Trademark Office at applicant's expense for incor-
poration in the file.  See  MPEP ? 608.01.

Examiner Note:

In the bracket, identify: 1) all of the specification; 2) certain pages of 
the specification; 3) particular claim(s); 4) the oath or declaration; 5) etc.

See In re Benson, 1959 C.D. 5, 744 O.G. 353 (Comm'r 
Pat. 1959). Reproductions prepared by heat-sensitive, hec-
tographic, or spirit duplication processes are also not satis-
factory.**

>ALTERATION OF APPLICATION PAPERS<

37 CFR 1.52(c) relating to interlineations and other 
alterations is strictly enforced. See In re Swanberg, 129 
USPQ 364 (Comm'r Pat. 1960). >See also MPEP 
? 605.04(a).<

**

>CERTIFIED COPIES OF AN APPLICATION-AS-
FILED

 If an application-as-filed does not meet the sheet size/
margin and quality requirements of 37 CFR 1.52 and  
1.84(f) and (g), certified copies of such application may be 
illegible and/or ineffective as priority documents. When an 
applicant requests that the PTO provide a certified copy of 
an application-as-filed and pays the fee set forth in 37 CFR  
1.19(b)(1), the PTO will make a copy of the application-as-
filed from the records in the Patent Image Capturing Sys-
tem (PICS) database (or the microfilm database). If papers 
submitted in the application-as-filed are not legible, certi-
fied copies of the application as originally filed will not be 
legible.

The PTO performs exception processing when scanning 
application papers that do not comply with the sheet size/
margin and quality requirements. If papers submitted in the 
application-as-filed (including any transmittal letter or 
cover sheet) do not meet the sheet size requirement of 
37 CFR  1.52 and  1.84(f) (e.g., the papers are legal size (8 
1/2 by 14 inches)), the PTO must reduce such papers to be 
able to image-scan the entire application and record it in the 
PICS database. In addition, if papers submitted in the appli-
cation-as-filed do not meet the quality requirements of 
37 CFR  1.52 (e.g., the papers are shiny or non-white), the 
PTO will attempt to enhance such papers before scanning 
to make the resulting electronic record in the PICS database 
more readable. However, if exception processing is 
required to make the PICS copy, certified copies of the 
application as originally filed may not be legible.

  If application papers are filed that do not meet sheet 
size/margin and quality requirements, the PTO will require 
the applicant to file substitute papers that do comply with 
the requirements of  37 CFR  1.52 and  1.84(f) and (g). The 
substitute papers submitted in reply to the above-mentioned 
requirement will provide the PTO with an image- and 
OCR-scannable copy of the application for printing the 
application as a patent. However, the PTO will not treat 
application papers submitted after the filing date of an 
application as the original disclosure of the application for 
making a certified copy of the application-as-filed or any 
other purpose. That is, even if an applicant subsequently 
files substitute application papers that comply with 37 CFR  
1.52 and then requests that the PTO provide a certified copy 
of an application-as-filed, paying the fee set forth in 
37 CFR 1.19(b)(1), the PTO will still make a copy of the 
application-as-filed from the records in the PICS (or micro-
film) database, and this database will not include the subse-
quently filed substitute papers.

If the certified copy of an application produced from the 
PICS (or microfilm) database is illegible, the applicant may 
pay the fee set forth in 37 CFR  1.19(b)(2) and request that 
the PTO obtain the application file and produce a certified 
copy of the application by photocopying the application-as-
filed as contained in the application file. The special han-
dling required to produce a certified copy of the application 
from the papers in the application file will also cause a 
delay in when a certified copy is available.<

USE OF METRIC SYSTEM OF MEASUREMENTS 
IN PATENT APPLICATIONS

In order to minimize the necessity in the future for con-
verting dimensions given in the English system of measure-
ments to the metric system of measurements when using 
printed patents as research and prior art search documents, 
all patent applicants should use the metric (S.I.) units fol-
lowed by the equivalent English units when describing 
their inventions in the specifications of patent applications. 

The initials S.I. stand for "Le Systeme International d' 
Unites," the French name for the International System of 
Units, a  modernized metric system adopted in 1960 by the 
International General Conference of Weights and Measures 
based on precise unit measurements made possible by mod-
ern technology.

FILING OF NON-ENGLISH LANGUAGE APPLICA-
TIONS

37 CFR 1.52.  Language, Paper, Writing, Margins.

*****

(d)	An application may be filed in a language other than English. 
An English translation of the non-English-language application, a state-
ment that the translation is accurate, and the fee set forth in ? 1.17(k) are 
required to be filed with the application or within such time as may be set 
by the Office.

The Patent and Trademark Office will accord a filing 
date to an application meeting the requirements of  
35 U.S.C. 111(a), or a provisional application in accor-
dance with  35 U.S.C. 111(b), even though some or all of 
the application papers, including the written description 
and the claims, is in a language other than English and 
hence does not comply with  37 CFR 1.52.

An English translation of the non-English language 
papers, a statement that the translation is accurate, the filing 
fee, the oath or declaration (if necessary) and fee set forth 
in  37 CFR 1.17(k) should either accompany the application 
papers or be filed in the Office within the time set by the 
Office.

A subsequently filed English translation must contain 
the complete identifying data for the application in order to 
permit prompt association with the papers initially filed. 
Accordingly, it is strongly recommended that the original 
application papers be accompanied by a cover letter and a 
self-addressed return postcard, each containing the follow-
ing identifying data in English: (a) applicant's name(s); (b) 
title of invention; (c) number of pages of specification, 
claims, and sheets of drawings; (d) whether  oath or decla-
ration was filed and (e) amount and manner of paying the 
filing fee.

The translation must be a literal translation and must be 
accompanied by a statement that the translation is accurate.  
The translation must also be accompanied by a signed 
request from the applicant, his or her attorney or agent, ask-
ing that the English translation be used as the copy for 
examination purposes in the Office.  If the English transla-
tion does not conform to idiomatic English and United 
States practice, it should be accompanied by a preliminary 
amendment making the necessary changes without the 
introduction of new matter prohibited by  35 U.S.C. 132. In 
the event the English translation is not timely filed in the 
Office, the application will be regarded as abandoned.

It should be recognized that this practice is intended for 
emergency situations to prevent loss of valuable rights and 
should not be routinely used for filing applications.  There 
are at least two reasons why this should not be used on a 
routine basis.  First, there are obvious dangers to applicant 
and the public if he or she fails to obtain a correct 
literal translation.  Second, the filing of a large number of 
applications under the procedure will create significant 
administrative burdens on the Office.

ILLUSTRATIONS IN THE SPECIFICATION

Graphical illustrations, diagrammatic views, flowcharts, 
and diagrams in the descriptive portion of the specification 
do not come within the purview of  37 CFR 1.58(a), which 
permits tables and chemical formulas in the specification in 
lieu of formal drawings.  The examiner should object to 
such descriptive illustrations in the specification and 
request formal drawings in accordance with  37 CFR 1.81 
when an application contains graphs in the specification.

Since the December 7, 1976, issue of patents, all tables 
and mathematical equations and chemical formulas, or por-
tions thereof, have been reproduced for printing by a com-
puter process developed by the Data Base Contractor.  
Those portions of chemical formulas which cannot be 
reproduced by the process, such as dotted, curved, broken 
and wedge-shaped lines, must be drawn by hand on the 
photocomposed page. There are, however, some chemical 
structures which cannot be reproduced because they are 
either too complex or involve too many lines which cannot 
be generated by the computer process.  The camera copy 
process, which is used to insert these types of structures 
onto the printed patent page, is both time consuming and 
costly to the Office.  Because of the reduction factor and 
failure to comply with the guidelines set forth in  37 CFR 
1.52(a) and 37 CFR 1.58(a) the reproduction of these struc-
tures is often poor.

Therefore, the specification, including any claims, may 
contain chemical formulas and mathematical equations, but 
should not contain drawings or flow diagrams or diagram-
matic views of chemical structures. The description portion 
of the specification may contain tables; claims may contain 
tables  only if necessary to conform to  35 U.S.C. 112.

See  MPEP ? 601.01(d) for treatment of applications 
filed without all pages of the specification.

>Hyperlinks and Other Forms of 
Browser-executable Code in the SpecIFI- 
cation   

 Examiners must review patent applications to make cer-
tain that hyperlinks and other forms of browser-executable 
code, especially commercial site URLs, are not included in 
the text of the application. Examples of a hyperlink or a 
browser-executable code are a URL placed between these 
symbols "< >" and http:// followed by a URL address. 
When a patent application with embedded hyperlinks and/
or other forms of browser-executable code issues as a 
patent and the patent document is placed on the PTO web 
page, when the patent document is retrieved and viewed via 
a web browser, the URL is interpreted as a valid HTML 
code and it becomes a live web link. When a user clicks on 
the link with a mouse, the user will be transferred to 
another web page identified by the URL, if it exists, which 
could be a commercial web site. PTO policy does not per-
mit the PTO to link to any commercial sites since the PTO 
exercises no control over the organization, views or accu-
racy of the information contained on these outside sites. 

If hyperlinks and/or other forms of browser-executable 
code are embedded in the text of the patent application, 
examiners should object to the specification and indicate to 
applicants that the embedded hyperlinks and/or other forms 
of browser-executable code are impermissible and require 
deletion. This requirement does not apply to electronic doc-
uments listed on forms PTO-892 and PTO-1449 where the 
electronic document is identified by reference to a URL. 

The attempt to incorporate subject matter into the patent 
application by reference to a hyperlink and/or other forms 
of browser-executable code is considered to be an improper 
incorporation by reference. See MPEP 608.01(p), para-
graph I regarding incorporation by reference. 

Note that nucleotide and/or amino acid sequence data 
placed between the symbols "< >" are not considered to be 
hyperlinks and/or browser-executable code and therefore 
should not be objected to as being an improper incorpora-
tion by reference (see 37 CFR  1.821 -  1.825). 

?  7.29.04 Disclosure Objected To, Embedded Hyperlinks or 
Other Forms of Browser-Executable Code

The disclosure is objected to because it contains an embedded hyper-
link and/or other form of browser-executable code. Applicant is required 
to delete the embedded hyperlink and/or other form of browser-executable 
code. See MPEP ?  608.01. 

Examiner Note:

1.	Examples of a hyperlink or a browser-executable code are a URL 
placed between these symbols "< >" and http://followed by a URL 
address. Nucleotide and/or amino acid sequence data placed between the 
symbols "< >" are not considered to be hyperlinks and/or browser-execut-
able code.

2.	If the application attempts to incorporate essential subject matter 
into the patent application by reference to a hyperlink and/or other form of 
browser-executable code, see MPEP ?  608.01.

3.	The requirement to delete an embedded hyperlink or other form of 
browser-executable code does not apply to electronic documents listed on 
forms PTO-892 and PTO-1449 where the electronic document is identified 
by reference to a URL.<

608.01(a)	Arrangement of Application

37 CFR 1.77.  Arrangement of application elements.

(a)	The elements of the application, if applicable, should appear in 
the following order:

(1)	Utility Application Transmittal Form.

(2)	Fee Transmittal Form.

(3)	Title of the invention; or an introductory portion stating the 
name, citizenship, and residence of the applicant, and the title of the 
invention.

(4)	Cross-reference to related applications.

(5)	Statement regarding federally sponsored research or devel-
opment.

(6)	Reference to a "Microfiche appendix." (See ? 1.96 (c)). The 
total number of microfiche and total number of frames should be speci-
fied.

(7)	Background of the invention.

(8)	Brief summary of the invention. 

(9)	Brief description of the several views of the drawing.

(10)	Detailed description of the invention.

(11)	Claim or claims.

(12)	Abstract of the Disclosure.

(13)	Drawings.

(14)	Executed oath or declaration.

(15)	Sequence Listing (See ?? 1.821 through 1.825).

(b)	The elements set forth in paragraphs (a)(3) through (a)(5), (a)(7) 
through (a)(12) and (a)(15) of this section should appear in upper case, 
without underlining or bold type, as section headings. If no text follows 
the section heading, the phrase "Not Applicable" should follow the section 
heading.

For design patent specification, see  MPEP ? 1503.01.

For plant patent specification, see  MPEP ? 1605.

For reissue patent specification, see  MPEP ? 1411.

The following order of arrangement of specification ele-
ments is preferable in framing the nonprovisional specifica-
tion and, except for the reference to a "Microfiche 
Appendix", each of the lettered items should appear in 
upper case, without underlining or bold type, as section 
headings.  If no text follows the section heading, the phrase 
"Not Applicable" should follow the section heading. It is 
recommended that provisional applications follow the same 
general format, although claims are not required.

(A)	Title of the Invention.

(B)	Cross-References to Related Applications.

(C)	Statement Regarding Federally Sponsored 
Research or Development.

(D)	Reference to a "Microfiche Appendix." (See  
37 CFR 1.96.)

(E)	Background of the Invention.

(1)	Field of the Invention.

(2)	Description of the related art including infor-
mation disclosed under  37 CFR 1.97and 1.98. 

(F)	Brief Summary of the Invention.

(G)	Brief Description of the Several Views of the 
Drawings.

(H)	Detailed Description of the Invention.

(I)	Claim or Claims.

(J)	Abstract of the Disclosure.

(K)	Drawings.

(L)	Sequence Listing (See  37 CFR 1.821-1.825).

Applicant (typically a pro se) may be advised of the 
proper arrangement by using Form Paragraph 6.01 or 6.02.

?  6.01 Arrangement of Specification

The following guidelines illustrate the preferred layout and content for 
patent applications.  These guidelines are suggested for the applicant's use.

Arrangement of the Specification

The following order or arrangement is preferred in framing the specifi-
cation and, except for the reference to a "Microfiche Appendix" and the 
drawings, each of the lettered items should appear in upper case, without 
underling or bold type, as section headings.  If no text follows the section 
heading, the phrase "Not Applicable" should follow the section heading:

(a)	Title of the Invention.

(b)	Cross-Reference to Related Applications.

(c)	Statement Regarding Federally Sponsored Research or Develop-
ment.

(d)	Reference to a "Microfiche Appendix" (see  37 CFR 1.96).

(e)	Background of the Invention.

(1)  Field of the Invention.

(2) Description of Related Art including information disclosed under  
37 CFR 1.97 and 1.98.

(f)	Brief Summary of the Invention.

(g)	Brief Description of the Several Views of the Drawing(s).

(h)	Detailed Description of the Invention.

(i)	Claim or Claims (commencing on a separate sheet).

(j)	Abstract of the Disclosure (commencing on a separate sheet).

(k)	Drawings.

(l)	Sequence Listing (see  37 CFR 1.821-1.825).

Examiner Note:

In this paragraph an introductory sentence will be necessary. This para-
graph is intended primarily for use in pro se applications.

?  6.02 Content of Specification

Content of Specification

(a)	  Title of the Invention: See  37 CFR 1.72(a).  The title of the inven-
tion should be placed at the top of the first page of the specification.  It 
should be brief but technically accurate and descriptive, preferably from 
two to seven words.  

(b)	  Cross-References to Related Applications: See  37 CFR 1.78 and  
MPEP ? 201.11.

(c)	  Statement Regarding Federally Sponsored Research or Develop-
ment: See  MPEP ?  310.

(d)	  Reference to a "Microfiche Appendix": See  37 CFR 1.96(c) and  
MPEP ? 608.05.  The total number of microfiche and the total number of 
frames should be specified.

(e)	  Background of the Invention: The specification should set forth the 
Background of the Invention in two parts:

(1) Field of the Invention: A statement of the field of art to which the 
invention pertains.  This statement may include a paraphrasing of the 
applicable U.S. patent classification definitions of the subject matter of the 
claimed invention.  This item may also be titled "Technical Field."

(2) Description of the Related Art: A description of the related art 
known to the applicant and including, if applicable, references to specific 
related art and problems involved in the prior art which are solved by the 
applicant's invention.  This item may also be titled "Background Art."

(f)	  Brief Summary of the Invention: A brief summary or general state-
ment of the invention as set forth in  37 CFR 1.73.  The summary is sepa-
rate and distinct from the abstract and is directed toward the invention 
rather than the disclosure as a whole.  The summary may point out the 
advantages of the invention or how it solves problems previously existent 
in the prior art (and preferably indicated in the Background of the Inven-
tion).  In chemical cases it should point out in general terms the utility of 
the invention.  If possible, the nature and gist of the invention or the inven-
tive concept should be set forth.  Objects of the invention should be treated 
briefly and only to the extent that they contribute to an understanding of 
the invention.

(g)	  Brief Description of the Several Views of the Drawing(s): A refer-
ence to and brief description of the drawing(s) as set forth in  37 CFR 1.74.

(h)	  Detailed Description of the Invention: A description of the pre-
ferred embodiment(s) of the invention as required in  37 CFR 1.71.  The 
description should be as short and specific as is necessary to describe the 
invention adequately and accurately.  Where elements or groups of ele-
ments, compounds, and processes, which are conventional and generally 
widely known in the field of the invention described, and their exact 
nature or type is not necessary for an understanding and use of the inven-
tion by a person skilled in the art, they should not be described in detail.  
However, where particularly complicated subject matter is involved or 
where the elements, compounds, or processes may not be commonly or 
widely known in the field, the specification should refer to another patent 
or readily available publication which adequately describes the subject 
matter.

(i)	  Claim or Claims: See  37 CFR 1.75 and  MPEP ? 608.01(m).  The 
claim or claims must commence on a separate sheet (37 CFR 1.52(b)).  
Where a claim sets forth a plurality of elements or steps, each element or 
step of the claim should be separated by a line indentation. There may be 
plural indentations to further segregate subcombinations or related steps.  
See  37 CFR 1.75.

(j)	  Abstract of the Disclosure: A brief narrative of the disclosure as a 
whole in a single paragraph of 250 words or less commencing on a sepa-
rate sheet following the claims.

(k)	  Drawings: See  37 CFR 1.81, 1.83-1.85, and  MPEP ? 608.02.

(l)	  Sequence Listing: See  37 CFR 1.821-1.825.

Examiner Note:

In this paragraph an introductory sentence will be necessary.  This 
paragraph is intended primarily for use in pro se applications.  See also 
"pro se" form paragraphs in  Chapter 1700 of the Manual of Patent Exam-
ining Form Paragraphs.

608.01(b)	Abstract of the Disclosure  

37 CFR 1.72.  Title and abstract.

*****

(b)	A brief abstract of the technical disclosure in the specification 
must commence on a separate sheet, preferably following the claims under 
the heading "Abstract of the Disclosure." The purpose of the abstract is to 
enable the Patent and Trademark Office and the public generally to deter-
mine quickly from a cursory inspection the nature and gist of the technical 
disclosure. The abstract shall not be used for interpreting the scope of the 
claims.

In all applications which lack an abstract, the examiner 
in the first Office action should require the submission of 
an abstract directed to the technical disclosure in the speci-
fication. See Form Paragraph 6.12 (below). Applicants may 
use either "Abstract" or "Abstract of the Disclosure" as a 
heading.

If the abstract contained in the application does not com-
ply with the guidelines, the examiner should point out the 
defect to the applicant in the first Office action, or at the 
earliest point in the prosecution that the defect is noted, and 
require compliance with the guidelines.  Since the abstract 
of the disclosure has been interpreted to be a part of the 
specification for the purpose of compliance with paragraph 
1 of  35 U.S.C. 112 (In re Armbruster, 512 F.2d 676, 678-
79, 185 USPQ 152, 154 (CCPA 1975)), it would ordinarily 
be preferable that the applicant make the necessary changes 
to the abstract to bring it into compliance with the guide-
lines. See Form Paragraphs 6.13-6.16 (below).

Replies to such actions requiring either a new abstract or 
amendment to bring the abstract into compliance with the 
guidelines should be treated under 37 CFR 1.111(b) prac-
tice like any other formal matter.  Any submission of a new 
abstract or amendment to an existing abstract should be 
carefully reviewed for introduction of new matter,  
35 U.S.C. 132,  MPEP ? 608.04.

Upon passing the application to issue, the examiner 
should make certain that the abstract is an adequate and 
clear statement of the contents of the disclosure and gener-
ally in line with the guidelines. The abstract shall be 
changed by the examiner's amendment in those instances 
where deemed necessary. This authority and responsibility 
of the examiner shall not be abridged by the desirability of 
having the applicant make the necessary corrections.  For 
example, if the application is otherwise in condition for 
allowance except that the abstract does not comply with the 
guidelines, the examiner generally should make any neces-
sary revisions by examiner's amendment rather than issuing 
an Ex parte Quayle action requiring applicant to make the 
necessary revisions.

Under current practice, in all instances where the appli-
cation contains an abstract when sent to issue, the abstract 
will be printed on the patent.

GUIDELINES FOR THE PREPARATION OF 
PATENT ABSTRACTS

Background

The Rules of Practice in Patent Cases require that each 
application for patent include an abstract of the disclosure,  
37 CFR 1.72(b).

The content of a patent abstract should be such as to 
enable the reader thereof, regardless of his or her degree of 
familiarity with patent documents, to ascertain quickly the 
character of the subject matter covered by the technical dis-
closure and should include that which is new in the art to 
which the invention pertains.

The abstract is not intended nor designated for use in 
interpreting the scope or meaning of the claims, 37 CFR 
1.72(b).

Content

A patent abstract is a concise statement of the technical 
disclosure of the patent and should include that which is 
new in the art to which the invention pertains.

If the patent is of a basic nature, the entire technical dis-
closure may be new in the art, and the abstract should be 
directed to the entire disclosure.

If the patent is in the nature of an improvement in old 
apparatus, process, product, or composition, the abstract 
should include the technical disclosure of the improvement.

In certain patents, particularly those for compounds and 
compositions, wherein the process for making and/or the 
use thereof are not obvious, the abstract should set forth a 
process for making and/or a use thereof.

If the new technical disclosure involves modifications or 
alternatives, the abstract should mention by way of exam-
ple the preferred modification or alternative.

The abstract should not refer to purported merits or spec-
ulative applications of the invention and should not com-
pare the invention with the prior art.

Where applicable, the abstract should include the fol-
lowing: (1) if a machine or apparatus, its organization and 
operation; (2) if an article, its method of making; (3) if a 
chemical compound, its identity and use; (4) if a mixture, 
its ingredients; (5) if a process, the steps. Extensive 
mechanical and design details of apparatus should not be 
given.

With regard particularly to chemical patents, for com-
pounds or compositions, the general nature of the com-
pound or composition should be given as well as the use 
thereof, e.g., "The compounds are of the class of alkyl ben-
zene sulfonyl ureas, useful as oral anti-diabetics." Exempli-
fication of a species could be illustrative of members of the 
class. For processes, the type reaction, reagents and process 
conditions should be stated, generally illustrated by a single 
example unless variations are necessary.

 Language and Format

The abstract must commence on a separate sheet, prefer-
ably following the claims, under the heading "Abstract of 
the Disclosure."  Form Paragraph 6.16.01 (below) may be 
used if the abstract does not commence on a separate sheet.

The abstract should be in narrative form and generally 
limited to a single paragraph within the range of 50 to 250 
words. The abstract should not exceed 25 lines of text. 
Abstracts exceeding 25 lines of text should be checked to 
see that it does not exceed 250 words in length since the 
space provided for the abstract on the computer tape by the 
printer is limited.  If the abstract cannot be placed on the 
computer tape because of its excessive length, the applica-
tion will be returned to the examiner for preparation of a 
shorter abstract. The form and legal phraseology often used 
in patent claims, such as  "means"  and  "said",  should be 
avoided. The abstract should sufficiently describe the dis-
closure to assist readers in deciding whether there is a need 
for consulting the full patent text for details.

The language should be clear and concise and should not 
repeat information given in the title. It should avoid using 
phrases which can be implied, such as, "This disclosure 
concerns," "The disclosure defined by this invention," 
"This disclosure describes,"  etc.

Responsibility

Preparation of the abstract is the responsibility of the 
applicant. Background knowledge of the art and an appreci-
ation of the applicant's contribution to the art are most 
important in the preparation of the abstract. The review of 
the abstract for compliance with these guidelines, with any 
necessary editing and revision on allowance of the applica-
tion, is the responsibility of the examiner.

Sample Abstracts

(1) A heart valve which has an annular valve body 
defining an orifice and a plurality of struts forming a 
pair of cages on opposite sides of the orifice. A spheri-
cal closure member is captively held within the cages 
and is moved by blood flow between open and closed 
positions in check valve fashion. A slight leak or back-
flow is provided in the closed position by making the 
orifice slightly larger than the closure member.  Blood 
flow is maximized in the open position of the valve by 
providing an inwardly convex contour on the orifice-
defining surfaces of the body.  An annular rib is formed 
in a channel around the periphery of the valve body to 
anchor a suture ring used to secure the valve within a 
heart.

(2) A method for sealing whereby heat is applied to 
seal, overlapping closure panels of a folding box made 
from paperboard having an extremely thin coating of 
moisture-proofing thermoplastic material on opposite 
surfaces. Heated air is directed at the surfaces to be 
bonded, the temperature of the air at the point of impact 
on the surfaces being above the char point of the board. 
The duration of application of heat is made so brief, by 
a corresponding high rate of advance of the boxes 
through the air stream, that the coating on the reverse 
side of the panels remains substantially non-tacky. The 
bond is formed immediately after heating within a 
period of time for any one surface point less than the 
total time of exposure to heated air of that point.  Under 
such conditions the heat applied to soften the thermo-
plastic coating is dissipated after completion of the 
bond by absorption into the board acting as a heat sink 
without the need for cooling devices.

(3) Amides are produced by reacting an ester of a car-
boxylic  acid with an amine, using as catalyst an alkox-
ide of an alkali metal.  The ester is first heated to at least 
75?C under a pressure of no more than 500 mm. of mer-
cury to remove moisture and acid gases which would 
prevent the reaction, and then converted to an amide 
without heating to initiate the reaction.

?  6.12 Abstract Missing (Background)

This application does not contain an abstract of the disclosure as 
required by  37 CFR 1.72(b).  An abstract on a separate sheet is required.

Examiner Note:

For pro se applicant, consider form paragraphs 6.14 to 6.16.

?  6.13 Abstract Objected To: Minor Informalities

The abstract of the disclosure is objected to because [1].  Correction is 
required.  See  MPEP ? 608.01(b).

Examiner Note:

In bracket 1, indicate the informalities that should be corrected.  Use 
this paragraph for minor informalities such as the inclusion of legal 
phraseology, undue length, etc.

?  6.14 Abstract of the Disclosure: Content

Applicant is reminded of the proper content of an abstract of the disclo-
sure.

A patent abstract is a concise statement of the technical disclosure of 
the patent and should include that which is new in the art to which the 
invention pertains.  If the patent is of a basic nature, the entire technical 
disclosure may be new in the art, and the abstract should be directed to the 
entire disclosure. If the patent is in the nature of an improvement in an old 
apparatus, process, product, or composition, the abstract should include 
the technical disclosure of the improvement.  In certain patents, particu-
larly those for compounds and compositions, wherein the process for mak-
ing and/or the use thereof are not obvious, the abstract should set forth a 
process for making and/or use thereof.  If the new technical disclosure 
involves modifications or alternatives, the abstract should mention by way 
of example the preferred modification or alternative.

The abstract should not refer to purported merits or speculative appli-
cations of the invention and should not compare the invention with the 
prior art.

Where applicable, the abstract should include the following:

(1) if a machine or apparatus, its organization and operation;

(2) if an article, its method of making;

(3) if a chemical compound, its identity and use;

(4) if a mixture, its ingredients;

(5) if a process, the steps.

Extensive mechanical and design details of an apparatus should not be 
included in the abstract.

Examiner Note:

See form paragraph 6.16.

?  6.15 Abstract of the Disclosure: Chemical Cases

Applicant is reminded of the proper content of an abstract of the disclo-
sure.

In chemical patent abstracts for compounds or compositions, the gen-
eral nature of the compound or composition should be given as well as its 
use, e.g., "The compounds are of the class of alkyl benzene sulfonyl ureas, 
useful as oral anti-diabetics."  Exemplification of a species could be illus-
trative of members of the class.  For processes, the type reaction, reagents 
and process conditions should be stated, generally illustrated by a single 
example unless variations are necessary. 

Complete revision of the content of the abstract is required on a sepa-
rate sheet.

?  6.16 Abstract of the Disclosure: Language

Applicant is reminded of the proper language and format for an 
abstract of the disclosure.

The abstract should be in narrative form and generally limited to a sin-
gle paragraph on a separate sheet within the range of 50 to 250 words.  It is 
important that the abstract not exceed 250 words in length since the space 
provided for the abstract on the computer tape used by the printer is lim-
ited.  The form and legal phraseology often used in patent claims, such as 
"means" and "said," should be avoided.  The abstract should describe the 
disclosure sufficiently to assist readers in deciding whether there is a need 
for consulting the full patent text for details.

The language should be clear and concise and should not repeat infor-
mation given in the title.  It should avoid using phrases which can be 
implied, such as, "The disclosure concerns," "The disclosure defined by 
this invention," "The disclosure describes," etc.

Examiner Note:

See also form paragraph 6.14.

?  6.16.01 Abstract of the Disclosure: Placement

The abstract of the disclosure does not commence on a separate sheet 
in accordance with  37 CFR 1.52(b)(1).  A new abstract of the disclosure is 
required and must be presented on a separate sheet, apart from any other 
text. 

Examiner Note:

This paragraph should only be used for applications filed on or after 
September 23, 1996.

608.01(c)	Background of the Invention 

The Background of the Invention ordinarily comprises 
two parts:

(1) Field of the Invention: A statement of the field of art 
to which the invention pertains. This statement may include 
a paraphrasing of the applicable U.S. patent classification 
definitions. The statement should be directed to the subject 
matter of the claimed invention.

(2) Description of the related art including information 
disclosed under  37 CFR 1.97 and  37 CFR 1.98: A para-
graph(s) describing to the extent practical the state of the 
prior art or other information disclosed known to the appli-
cant, including references to specific prior art or other 
information where appropriate. Where applicable, the prob-
lems involved in the prior art or other information disclosed 
which are solved by the applicant's invention should be 
indicated. See also MPEP ? 608.01(a), ? 608.01(p) and  
? 707.05(b). 

608.01(d)	Brief Summary of Invention

37 CFR 1.73.  Summary of the invention.

A brief summary of the invention indicating its nature and substance, 
which may include a statement of the object of the invention, should pre-
cede the detailed description. Such summary should, when set forth, be 
commensurate with the invention as claimed and any object recited should 
be that of the invention as claimed.

Since the purpose of the brief summary of invention is to 
apprise the public, and more especially those interested in 
the particular art to which the invention relates, of the 
nature of the invention, the summary should be directed to 
the specific invention being claimed, in contradistinction to 
mere generalities which would be equally applicable to 
numerous preceding patents. That is, the subject matter of 
the invention should be described in one or more clear, con-
cise sentences or paragraphs. Stereotyped general state-
ments that would fit one case as well as another serve no 
useful purpose and may well be required to be canceled as 
surplusage, and, in the absence of any illuminating state-
ment, replaced by statements that are directly on point as 
applicable exclusively to the case at hand.

The brief summary, if properly written to set out the 
exact nature, operation, and purpose of the invention, will 
be of material assistance in aiding ready understanding of 
the patent in future searches.  The brief summary should be 
more than a mere statement of the objects of the invention, 
which statement is also permissible under 37 CFR 1.73.

The brief summary of invention should be consistent 
with the subject matter of the claims. Note final review of 
application and preparation for issue,  MPEP ? 1302.

608.01(e)	Reservation Clauses Not 
Permitted

37 CFR 1.79.  Reservation clauses not permitted.

A reservation for a future application of subject matter disclosed but 
not claimed in a pending application will not be permitted in the pending 
application, but an application disclosing unclaimed subject matter may 
contain a reference to a later filed application of the same applicant or 
owned by a common assignee disclosing and claiming that subject matter.

608.01(f)	Brief Description of Drawings 

37 CFR 1.74.  Reference to drawings.

When there are drawings, there shall be a brief description of the sev-
eral views of the drawings and the detailed description of the invention 
shall refer to the different views by specifying the numbers of the figures, 
and to the different parts by use of reference letters or numerals (prefera-
bly the latter).

The Office of Initial Patent Examination (OIPE) will 
review the specification, including the brief description, to 
determine whether all of the figures of drawings described 
in the specification are present. If the specification 
describes a figure which is not present in the drawings, the 
application will be treated as an application filed without 
all figures of drawings in accordance with MPEP 
? 601.01(g), unless the application lacks any drawings, 
in which case the application will be treated as an applica-
tion filed without drawings in accordance with MPEP 
? 601.01(f).

The examiner should see to it that the figures are cor-
rectly described in the brief description of the drawing, that 
all section lines used are referred to, and that all needed 
section lines are used.

The specification must contain or be amended to contain 
proper reference to the existence of drawings executed in 
color as required by  37 CFR 1.84.

37 CFR 1.84.  Standards for drawings.

(a)	Drawings. There are two acceptable categories for presenting 
drawings in utility patent applications:

(1)	Black ink. Black and white drawings are normally required. 
India ink, or its equivalent that secures solid black lines, must be used for 
drawings, or 

(2)	Color. On rare occasions, color drawings may be necessary 
as the only practical medium by which to disclose the subject matter 
sought to be patented in a utility patent application or the subject matter of 
a statutory invention registration. The Patent and Trademark Office will 
accept color drawings in utility patent applications and statutory invention 
registrations only after granting a petition filed under this paragraph 
explaining why the color drawings are  necessary. Any such petition must 
include the following:

(i)	The fee set forth in ? 1.17(i);

(ii)	Three (3) sets of color drawings; and

(iii)	The specification must contain the following language as 
the first paragraph in that portion of the specification relating to the brief 
description of the drawing:

The file of this patent contains at least one drawing executed in 
color. Copies of this patent with color drawing(s) will be provided 
by the Patent and Trademark Office upon request and payment of 
the necessary fee.

If the language is not in the specification, a proposed amendment to 
insert the language must accompany the petition.

*****

608.01(g)	Detailed Description of Invention   
[R-1]

A detailed description of the invention and drawings fol-
lows the general statement of invention and brief descrip-
tion of the drawings. This detailed description, required by  
37 CFR 1.71, MPEP ? 608.01, must be in such particularity 
as to enable any person skilled in the pertinent art or sci-
ence to make and use the invention without involving 
extensive experimentation. An applicant is ordinarily per-
mitted to use his or her own terminology, as long as it can 
be understood. Necessary grammatical corrections, how-
ever, should be required by the examiner, but it must be 
remembered that an examination is not made for the pur-
pose of securing grammatical perfection.

The reference characters must be properly applied, no 
single reference character being used for two different parts 
or for a given part and a modification of such part.  In the 
latter case, the reference character, applied to the given 
part, with a prime affixed may advantageously be applied 
to the modification. Every feature specified in the claims 
must be illustrated, but there should be no superfluous 
illustrations.

The description is a dictionary for the claims and should 
provide clear support or antecedent basis for all terms used 
in the claims. See  37 CFR 1.75,  MPEP ? 608.01(i), 
? 608.01(o), and  ? 1302.01.

For completeness, see  MPEP ? 608.01(p).

USE OF SYMBOL "Phi" IN PATENT APPLICATION

The Greek letter "Phi'' has long been used as a symbol in 
equations in all technical disciplines. It further has special 
uses which include the indication of an electrical phase or 
clocking signal as well as an angular measurement. The 
recognized symbols for the upper and lower case Greek Phi 
characters, however, do not appear on most typewriters. 
This apparently has led to the use of a symbol composed by 
first striking a zero key and then backspacing and striking 
the "cancel" or "slash" key to result in an approximation of 
accepted symbols for the Greek character Phi. In other 
instances, the symbol is composed using the upper or lower 
case letter "O" with the "cancel" or "slash" superimposed 
thereon by backspacing, or it is simply handwritten in a 
variety of styles.  These expedients result in confusion 
because of the variety of type sizes and styles available on 
modern typewriters.

In recent years, the growth of data processing has seen 
the increasing use of this symbol ("O") as the standard rep-
resentation of zero.  The "slashed" or "canceled" zero  is 
used to indicate zero and avoid confusion with the upper 
case letter  "O"  in both text and drawings.

Thus, when the symbol "O" in one of its many varia-
tions, as discussed above, appears in patent applications 
being prepared for printing, confusion as to the intended 
meaning of the symbol arises. Those (such as examiners, 
attorneys, and applicants) working in the art can usually 
determine the intended meaning of this symbol because of 
their knowledge of the subject matter involved, but editors 
preparing these applications for printing have no such spe-
cialized knowledge and confusion arises as to which sym-
bol to print. The result, at the very least, is delay until the 
intended meaning of the symbol can be ascertained.

Since the Office does not have the resources to conduct a 
technical editorial review of each application before print-
ing, and in order to eliminate the problem of printing delays 
associated with the usage of these symbols, any question 
about the intended symbol will be resolved by the editorial 
staff of the Office of Patent Publication by printing the 
symbol O whenever that symbol is used  by the applicant. 
Any Certificate of Correction necessitated by the above 
practice will be at the patentee's expense (37 CFR  1.323) 
because the intended symbol  was not accurately presented 
by the Greek upper or lower case Phi letters in the patent 
application.

608.01(h)	Mode of Operation of  Invention  

The best mode contemplated by the inventor of carrying 
out his or her invention must be set forth in the description. 
See  35 U.S.C. 112. There is no statutory requirement for 
the disclosure of a specific example. A patent specification 
is not intended nor required to be a production specifica-
tion. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 
1536, 3 USPQ2d 1737, 1745 (Fed. Cir. 1987);  In re Gay, 
309 F.2d 768, 135 USPQ 311 (CCPA 1962). The absence of 
a specific working example is not necessarily evidence that 
the best mode has not been disclosed, nor is the presence of 
one evidence that it has. In re Honn, 364 F.2d 454, 150 
USPQ 652 (CCPA 1966). In determining the adequacy of a 
best mode disclosure, only evidence of concealment (acci-
dental or intentional) is to be considered. That evidence 
must tend to show that the quality of an applicant's best 
mode disclosure is so poor as to effectively result in con-
cealment. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 
1524, 1536, 3 USPQ2d 1737, 1745 (Fed. Cir. 1987); In re 
Sherwood, 613 F.2d 809, 204 USPQ 537 (CCPA 1980).

The question of whether an inventor has or has not dis-
closed what he or she feels is his or her best mode is a ques-
tion separate and distinct from the question of sufficiency 
of the disclosure. Spectra-Physics, Inc. v. Coherent, Inc., 
827 F.2d 1524, 1532, 3 USPQ2d 1737, 1742 (Fed. Cir. 
1987); In re Glass, 492 F.2d 1228, 181 USPQ 31 (CCPA 
1974); In re Gay, 309 F.2d 708, 135 USPQ 311 (CCPA 
1962). See  35 U.S.C. 112 and  37 CFR 1.71(b).

If the best mode contemplated by the inventor at the time 
of filing the application is not disclosed, such defect cannot 
be cured by submitting an amendment seeking to put into 
the specification something required to be there when the 
application was originally filed. In re Hay, 534 F.2d 917, 
189 USPQ 790 (CCPA 1976). Any proposed amendment of 
this type should be treated as new matter.

Patents have been held invalid in cases where the paten-
tee did not disclose the best mode known to him. See 
Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923. 16 
USPQ2d 1033 (Fed. Cir. 1990); Dana Corp. v. IPC Ltd. 
Partnership, 860 F.2d 415, 8 USPQ2d 1692 (Fed. Cir. 
1988); Spectra-Physics, Inc. v. Coherent, Inc., 821 F.2d 
1524, 3 USPQ2d 1737 (Fed. Cir. 1987).

For completeness, see  MPEP ? 608.01(p) and  ? 2165 to  
? 2165.04.

608.01(i)	Claims  

37 CFR 1.75.  Claims

(a)	The specification must conclude with a claim particularly point-
ing out and distinctly claiming the subject matter which the applicant 
regards as his invention or discovery.

(b)	More than one claim may be presented provided they differ sub-
stantially from each other and are not unduly multiplied.

(c)	One or more claims may be presented in dependent form, refer-
ring back to and further limiting another claim or claims in the same appli-
cation. Any dependent claim which refers to more than one other claim 
("multiple dependent claim" ) shall refer to such other claims in the alter-
native only. A multiple dependent claim shall not serve as a basis for any 
other multiple dependent claim. For fee calculation purposes under ? 1.16, 
a multiple dependent claim will be considered to be that number of claims 
to which direct reference is made therein. For fee calculation purposes, 
also, any claim depending from a multiple dependent claim will be consid-
ered to be that number of claims to which direct reference is made in that 
multiple dependent claim. In addition to the other filing fees, any original 
application which is filed with, or is amended to include, multiple depen-
dent claims must have paid therein the fee set forth in ? 1.16(d). Claims in 
dependent form shall be construed to include all the limitations of the 
claim incorporated by reference into the dependent claim. A multiple 
dependent claim shall be construed to incorporate by reference all the lim-
itations of each of the particular claims in relation to which it is being con-
sidered.

(d)(1)	The claim or claims must conform to the invention as set forth 
in the remainder of the specification and the terms and phrases used in the 
claims must find clear support or antecedent basis in the description so 
that the meaning of the terms in the claims may be ascertainable by refer-
ence to the description (See ? 1.58(a).)

(2)	See ?? 1.141 to 1.146 as to claiming different inventions in 
one application.

(e)	Where the nature of the case admits, as in the case of an 
improvement, any independent claim should contain in the following 
order, (1) a preamble comprising a general description of all the elements 
or steps of the claimed combination which are conventional or known, (2) 
a phrase such as  "wherein the improvement comprises," and (3) those ele-
ments, steps and/or relationships which constitute that portion of the 
claimed combination which the applicant considers as the new or 
improved portion.

(f)	If there are several claims, they shall be numbered consecutively 
in Arabic numerals.

(g)	The least restrictive claim should be presented as claim number 
1, and all dependent claims should be grouped together with the claim or 
claims to which they refer to the extent practicable.

(h)	The claim or claims must commence on a separate sheet.

(i)	Where a claim sets forth a plurality of elements or steps, each 
element or step of the claim should be separated by a line indentation.

For numbering of claims, see  MPEP ? 608.01(j).

For form of claims, see  MPEP ? 608.01(m).

For dependent claims, see  MPEP ? 608.01(n).

For examination of claims, see  MPEP ? 706.

For claims in excess of fee, see  MPEP ? 714.10. 

608.01(j)	Numbering of Claims

37 CFR 1.126.  Numbering of claims.

The original numbering of the claims must be preserved throughout the 
prosecution. When claims are canceled the remaining claims must not be 
renumbered.  When claims are added, they must be numbered by the 
applicant consecutively beginning with the number next following the 
highest numbered claim previously presented (whether entered or not). 
When the application is ready for allowance, the examiner, if necessary, 
will renumber the claims consecutively in the order in which they appear 
or in such order as may have been requested by applicant.

In a single claim case, the claim is not numbered.

Form Paragraph 6.17 may be used to notify applicant.

?  6.17 Numbering of Claims, 37 CFR 1.126

The numbering of claims is not accordance with  37 CFR 1.126, which 
requires the original numbering of the claims to be preserved throughout 
the prosecution.  When claims are canceled, the remaining claims must not 
be renumbered.  When new claims are presented, they must be numbered 
consecutively beginning with the number next following the highest num-
bered claims previously presented (whether entered or not).

Misnumbered claim  [1] been renumbered [2].

Examiner Note:

1.	In bracket 1, insert appropriate claim number(s) and --has-- or -- 
have --.

2.	In bracket 2, insert correct claim number(s) and --, respectively -- if 
more than one claim is involved.

608.01(k)	Statutory Requirement of Claims

35 U.S.C. 112 requires that the applicant shall particu-
larly point out and distinctly claim the subject matter which 
he or she regards as his or her invention. The portion of the 
application in which he or she does this forms the claim or 
claims. This is an important part of the application, as it is 
the definition of that for which protection is granted.

608.01(l)	Original Claims

In establishing a disclosure, applicant may rely not only 
on the description and drawing as filed but also on the orig-
inal claims if their content justifies it.

Where subject matter not shown in the drawing or 
described in the description is claimed in the case as filed, 
and such original claim itself constitutes a clear disclosure 
of this subject matter, then the claim should be treated on 
its merits, and requirement made to amend the drawing and 
description to show this subject matter.  The claim should 
not be attacked either by objection or rejection because this 
subject matter is lacking in the drawing and description. It 
is the drawing and description that are defective, not the 
claim.

It is, of course, to be understood that this disclosure in 
the claim must be sufficiently specific and detailed to sup-
port the necessary amendment of the drawing and descrip-
tion.

608.01(m)	Form of Claims  [R-1]

The claim or claims must commence on a separate sheet 
and should appear after the detailed description of the 
invention. While there is no set statutory form for claims, 
the present Office practice is to insist that each claim must 
be the object of a sentence starting with "I (or we) claim'', 
"The invention claimed is'' (or the equivalent).  If, at the 
time of allowance, the quoted terminology is not present, it 
is inserted by the clerk. Each claim begins with a capital 
letter and ends with a period. Periods may not be used else-
where in the claims except for abbreviations. See Fressola 
v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a 
claim sets forth a plurality of elements or steps, each ele-
ment or step of the claim should be separated by a line 
indentation,  37 CFR 1.75(i).

There may be plural indentations to further segregate 
subcombinations or related steps. In general, the printed 
patent copies will follow the format used but printing diffi-
culties or expense may prevent the duplication of unduly 
complex claim formats.

Reference characters corresponding to elements recited 
in the detailed description and the drawings may be used in 
conjunction with the recitation of the same element or 
group of elements in the claims. The reference characters, 
however, should be enclosed within parentheses so as to 
avoid confusion with other numbers or characters which 
may appear in the claims. The use of reference characters is 
to be considered as having no effect on the scope of the 
claims.

Many of the difficulties encountered in the prosecution 
of patent applications after final rejection may be alleviated 
if each applicant includes, at the time of filing or no later 
than the first reply, claims varying from the broadest to 
which he or she believes he or she is entitled to the most 
detailed that he or she is willing to accept.

Claims should preferably be arranged in order of scope 
so that the first claim presented is the least restrictive. All 
dependent claims should be grouped together with the 
claim or claims to which they refer to the extent practica-
ble. Where separate species are claimed, the claims of like 
species should be grouped together where possible. Simi-
larly, product and process claims should be separately 
grouped. Such arrangements are for the purpose of facilitat-
ing classification and examination.

The form of claim required in  37 CFR 1.75(e) is particu-
larly adapted for the description of improvement-type 
inventions. It is to be considered a combination claim. The 
preamble of this form of claim is considered to positively 
and clearly include all the elements or steps recited therein 
as a part of the claimed combination.

For rejections not based on prior art, see  MPEP 
? 706.03.

The following form paragraphs may be used to object to 
the form of the claims.

?  6.18.01 Claims: Placement

The claims in this application do not commence on a separate sheet in 
accordance with  37 CFR *>1.52(b)<.  Appropriate correction is required 
in response to this action.

Examiner Note:

This paragraph should only be used for applications filed on or after 
September 23, 1996.

?  7.29.01 Claims Objected to, Minor Informalities

Claim[1] objected to because of the following informalities: [2].  
Appropriate correction is required.

Examiner Note:

1.	Use this form paragraph to point out minor informalities such as 
spelling errors, inconsistent terminology, etc., which should be corrected.

2.	If the informalities render the claim(s) indefinite, use form paragraph 
7.34.01 instead to reject the claim(s) under  35 U.S.C. 112, second para-
graph.

?  7.29.02 Claims Objected to, Reference Characters Not 
Enclosed Within Parentheses

The claims are objected to because they include reference characters 
which are not enclosed within parentheses.  

Reference characters corresponding to elements recited in the detailed 
description of the drawings and used in conjunction with the recitation of 
the same element or group of elements in the claims should be enclosed 
within parentheses so as to avoid confusion with other numbers or charac-
ters which may appear in the claims.  See  MPEP ? 608.01(m).

Examiner Note:

1.	Use of this paragraph is optional.  You may instead choose to correct 
the error yourself at time of allowance by informal examiner's amend-
ment.

2.	If the lack of parentheses renders the claim(s) indefinite, use form 
paragraph 7.34.01 instead to reject the claim(s) under  35 U.S.C. 112, sec-
ond paragraph.

?  7.29.03 Claims Objected to, Spacing of Lines

The claims are objected to because the lines are crowded too closely 
together, making reading and entry of amendments difficult.  Substitute 
claims with lines one and one-half or double spaced on good quality paper 
are required.  See  37 CFR 1.52(b).

Amendments to the claims must be in compliance with  
37 CFR 1.121(a)(2). Form paragraphs 6.33 and 6.34 may 
be used to inform applicant of nonentry of amendments to 
the claims.

?  6.33 Amendment to the Claims, Addition of More Than 5 Words, 
37 CFR 1.121

The reply filed on [1] is not fully responsive to the prior Office action 
and  the amendment to the claims has not been entered, because the 
amendment requests the addition of more than five words in at least one 
claim.  See  37 CFR 1.121(a)(2)(i) below:

(i)	Instructions for insertions and deletions:  A claim may be 
amended by specifying only the exact matter to be deleted or 
inserted by an amendment and the precise point where the deletion 
or insertion is to be made, where the changes are limited to:

(A)	Deletions and/or

(B)	The addition of no more than five (5) words in any one claim; or

The amendment to the claims should be made in accordance with  
37 CFR 1.121(a)(2)(ii) which states:

(ii)	Claim cancellation or rewriting:  A claim may be amended by 
directions to cancel the claim or by rewriting such claim with 
underlining below the matter added and brackets around the matter 
deleted.  The rewriting of a claim in this form will be construed as 
directing the deletion of the previous version of that claim.  If a pre-
viously rewritten claim is again rewritten, underlining and bracket-
ing will be applied relative to the previous version of the claim, 
with the parenthetical expression "twice amended," "three times 
amended," etc., following the original claim number.  The original 
claim number followed by that parenthetical expression must be 
used for the rewritten claim.  No interlineations or deletions of any 
prior amendment may appear in the currently submitted version of 
the claim.  A claim canceled by amendment (not deleted and rewrit-
ten) can be reinstated only by a subsequent amendment presenting 
the claim as a new claim with a new claim number.

Since the above-mentioned reply appears to be bona fide, applicant is 
given TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS from 
the mailing date of this notice, whichever is longer, within which to supply 
an amendment in compliance with  37 CFR 1.121 in order to avoid aban-
donment.  EXTENSIONS OF THIS TIME PERIOD MAY BE 
GRANTED UNDER  37 CFR 1.136(a)

Examiner Note:

1.	In bracket 1, insert the filing date of the reply.

>

?  6.34  Amendment of the Claims, Use of Brackets or Underlining 
Unclear

 Brackets or underlining are commonly used to indicate amendments or 
changes in the claims as provided in 37 CFR 1.121(a)(2)(ii) and are nor-
mally not intended to be printed in the published patent. In the reply filed 
[1], applicant has used [2] in such a manner that it is unclear to the exam-
iner whether the [3] is intended to appear in the patent. The [4] is unclear 
because [5]. If underlining and/or bracketing is intended to appear in the 
claims in the published patent, such intention must be clearly indicated in 
applicant's reply to this notice. 

Since the above-mentioned reply appears to be bona fide, applicant is 
given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS 
from the mailing date of this notice, whichever is longer, within which to 
supply an amendment in compliance with 37 CFR  1.121 and this notice in 
order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD 
MAY BE GRANTED UNDER 37 CFR  1.136(a).

Examiner Note:

1.	See MPEP ? 714.22  for the proper use of this form paragraph.

2.	In brackets 2, 3, and 4, insert --underlining-- and/or --bracketing--.

3.	In bracket 5, insert an explanation of why the underlining or bracket-
ing is unclear.

4.	When confronted by a proposed amendment to the claims which is 
unclear and the examiner cannot perform a meaningful and thorough 
search and examination of the claims, the examiner should attempt to seek 
clarification from the applicant. Before sending out an Office action or 
notice setting a new time period for reply, the examiner should first 
attempt to call the applicant to determine whether the applicant intends the 
underlining and/or bracketing to appear in the issued patent. The sub-
stance of the interview must be made of record. The above form paragraph 
restarting the time period should only be used in such cases where the 
examiner is unable to obtain clarification from the applicant by telephone.

5.	This form paragraph should not be used in a reissue application or a 
reexamination proceeding.<

608.01(n)	Dependent Claims [R-1]

I.	MULTIPLE DEPENDENT CLAIMS

37 CFR 1.75.  Claim(s).

*****

(c)	One or more claims may be presented in dependent form, refer-
ring back to and further limiting another claim or claims in the same appli-
cation. Any dependent claim which refers to more than one other claim 
("multiple dependent claim") shall refer to such other claims in the alter-
native only. A multiple dependent claim shall not serve as a basis for any 
other multiple dependent claim. For fee calculation purposes under ? 1.16, 
a multiple dependent claim will be considered to be that number of claims 
to which direct reference is made therein. For fee calculation purposes, 
also, any claim depending from a multiple dependent claim will be consid-
ered to be that number of claims to which direct reference is made in that 
multiple dependent claim. In addition to the other filing fees, any original 
application which is filed with, or is amended to include, multiple depen-
dent claims must have paid therein the fee set forth in ? 1.16(d). Claims in 
dependent form shall be construed to include all the limitations of the 
claim incorporated by reference into the dependent claim. A 
multiple dependent claim shall be construed to incorporate by reference all 
the limitations of each of the particular claims in relation to which it is 
being considered.

*****

Generally, a multiple dependent claim is a dependent 
claim which refers back in the alternative to more than one 
preceding independent or dependent claim.

The second paragraph of  35 U.S.C. 112 has been revised 
in view of the multiple dependent claim practice introduced 
by the Patent Cooperation Treaty. Thus 35 U.S.C. 112 
authorizes multiple dependent claims in applications filed 
on and after January 24, 1978, as long as they are in the 
alternative form (e.g., "A machine according to claims 3 or 
4, further comprising --- "). Cumulative claiming (e.g., "A 
machine according to claims 3 and 4, further comprising ---
" ) is not permitted. A multiple dependent claim may refer 
in the alternative to only one set of claims. A claim such as 
"A device as in claims 1, 2, 3, or 4, made by a process of 
claims 5, 6, 7, or 8" is improper. 35 U.S.C. 112 allows ref-
erence to only a particular claim. Furthermore, a multiple 
dependent claim may not serve as a basis for any other mul-
tiple dependent claim, either directly or indirectly. These 
limitations help to avoid undue confusion in determining 
how many prior claims are actually referred to in a multiple 
dependent claim.

A multiple dependent claim which depends from another 
multiple dependent claim should be objected to by using 
Form Paragraph 7.45.

?  7.45 Improper Multiple Dependent Claims

Claim  [1] objected to under  37 CFR 1.75(c) as being in improper 
form because a multiple dependent claim [2].  See  MPEP ? 608.01(n).  
Accordingly, the claim  [3] not been further treated on the merits.

Examiner Note:

1.	In bracket 2, insert --should refer to other claims in the 
alternative only--, and/or, --cannot depend from any other multiple depen-
dent claim--.

2.	Use this paragraph rather than  35 U.S.C. 112, fifth paragraph.

3.	In bracket 3, insert --has-- or --s have--.

Assume each claim example given below is from a dif-
ferent application.

A.	Acceptable Multiple Dependent Claim Wording

Claim 5. A gadget according to claims 3 or 4, further 
comprising ---

Claim 5. A gadget as in any one of the preceding claims, 
in which ---

Claim 3. A gadget as in either claim 1 or claim 2, further 
comprising ---

Claim 4. A gadget as in claim 2 or 3, further 
comprising ---

Claim 16. A gadget as in claims 1, 7, 12, or 15, further 
comprising ---

Claim 5. A gadget as in any of the preceding claims, in 
which ---

Claim 8. A gadget as in one of claims 4-7, in which ---

Claim 5. A gadget as in any preceding claim, in       
which ---

Claim 10. A gadget as in any of claims 1-3 or 7-9, in 
which ---

Claim 11. A gadget as in any one of claims 1, 2, or 7-10 
inclusive, in which ---

B.	Unacceptable Multiple Dependent Claim Wording

1.	Claim Does Not Refer Back in the Alternative 
Only

Claim 5. A gadget according to claim 3 and 4, further 
comprising ---

Claim 9. A gadget according to claims 1-3, in which ---

Claim 9. A gadget as in claims 1 or 2 and 7 or 8,   
which ---

Claim 6. A gadget as in the preceding claims in which --- 

Claim 6. A gadget as in claims 1, 2, 3, 4 and/or 5, in 
which ---

Claim 10. A gadget as in claims 1-3 or 7-9, in which ---

2.	Claim Does Not Refer to a Preceding Claim

Claim 3. A gadget as in any of the following claims, in 
which ---

Claim 5. A gadget as in either claim 6 or claim 8, in 
which ---

3.	Reference to Two Sets of Claims to Different 
Features

Claim 9. A gadget as in claim 1 or 4 made by the process 
of claims 5, 6, 7, or 8, in which ---

4.	Reference Back to Another Multiple Dependent 
Claim

Claim 8. A gadget as in claim 5 (claim 5 is a multiple 
dependent claim) or claim 7, in which ---

35 U.S.C. 112 indicates that the limitations or elements 
of each claim incorporated by reference into a multiple 
dependent claim must be considered separately. Thus, a 
multiple dependent claim, as such, does not contain all the 
limitations of all the alternative claims to which it refers, 
but rather contains in any one embodiment only those limi-
tations of the particular claim referred to for the embodi-
ment under consideration. Hence, a multiple dependent 
claim must be considered in the same manner as a plurality 
of single dependent claims.

C.	Restriction Practice

For restriction purposes, each embodiment of a 
multiple dependent claim is considered in the same manner 
as a single dependent claim. Therefore, restriction may be 
required between the embodiments of a multiple dependent 
claim. Also, some embodiments of a multiple dependent 
claim may be held withdrawn while other embodiments are 
considered on their merits.   

D.	Handling of Multiple Dependent Claims by the 
Office of Initial Patent Examination

The Office of Initial Patent Examination (OIPE) is 
responsible for verifying whether multiple dependent 
claims filed with the application are in proper alternative 
form, that they depend only upon prior independent or sin-
gle dependent claims and also for calculating the amount of 
the filing fee. A new form, PTO-1360, has been designed to 
be used in conjunction with the current fee calculation form 
PTO-875.

E.	Handling of Multiple Dependent Claims by the 
Examining Group Technical Support Staff

The examining group technical support staff is responsi-
ble for verifying compliance with the statute and rules of 
multiple dependent claims added by amendment and for 
calculating the amount of any additional fees required.  
This calculation should be performed on form PTO-1360.

There is no need for an examining group technical sup-
port staff to check the accuracy of the initial filing fee since 
this has already been verified by the Office of Initial Patent 
Examination when granting the filing date.

If a multiple dependent claim (or claims) is added in an 
amendment without the proper fee, either by adding refer-
ences to prior claims or by adding a new multiple depen-
dent claim, the amendment should not be entered until the 
fee has been received.  In view of the requirements for mul-
tiple dependent claims, no amendment containing new 
claims or changing the dependency of claims should be 
entered before checking whether the paid fees cover the 
costs of the amended claims. The applicant, or his or her 
attorney or agent, should be contacted to pay the additional 
fee. Where a letter is written in an insufficient fee situation, 
a copy of the multiple dependent claim fee calculation, 
form PTO-1360, should be included for applicant's infor-
mation.

If an application filed prior to October 1, 1982, is 
amended on or after October 1, 1982, to include a proper 
multiple dependent claim for the first time, the fee set forth 
in ? 1.16(d) must be paid.

If such an application contained a proper multiple depen-
dent claim prior to October 1, 1982, the fee set forth in 
? 1.16(d) does not apply.

Where the examining group technical support staff notes 
that the reference to the prior claims is improper in an 
added or amended multiple dependent claim, a notation 
should be made in the left margin next to the claim itself 
and the number 1, which is inserted in the "Dep. Claim" 
column of that amendment on form PTO-1360, should be 
circled in order to call this matter to the examiner's atten-
tion.

F.	Handling of Multiple Dependent Claims by the 
Examiner

Public Law 94-131, the implementing legislation for the 
Patent Cooperation Treaty amended  35 U.S.C. 112 to state 
that "a claim in dependent form shall contain a reference to 
a claim   previously set forth."  The requirement to refer to a 
previous claim had existed only in  37 CFR 1.75(c) before.

The following procedures are to be followed by examin-
ers when faced with claims which refer to numerically suc-
ceeding claims:

If any series of dependent claims contains a claim with 
an improper reference to a numerically following claim 
which cannot be understood, the claim referring to a fol-
lowing claim should normally be objected to and not 
treated on the merits.

However, in situations where a claim refers to a numeri-
cally following claim and the dependency is clear, both as 
presented and as it will be renumbered at issue, all claims 
should be examined on the merits and no objection as to 
form need be made. In such cases, the examiner will 
renumber the claims into proper order at the time the appli-
cation is allowed. (See Example B, below.)

Any unusual problems should be brought to the supervi-
sor's attention.

Example  A

(Claims 4 and 6 should be objected to as not being 
understood and should not be treated on the merits.)

1. Independent

2. Dependent on claim 5

3. Dependent on claim 2

4.  ". . . as in any preceding claim" 

5. Independent

6. Dependent on claim 4

Example  B

Note: Parenthetical numerals represent the claim num-
bering for issue should all claims be allowed.

(All claims should be examined.)

1. (1) Independent

2. (5) Dependent on claim 5 (4)

3. (2) Dependent on claim 1 (1)

4. (3) Dependent on claim 3 (2)

5. (4) Dependent on either claim 1 (1) or claim 3 (2)

The following practice is followed by patent examiners 
when making reference to a dependent claim either singular 
or multiple:

(A)	When identifying a singular dependent claim 
which does not include a reference to a multiple dependent 
claim, either directly or indirectly, reference should be 
made only to the number of the dependent claim.

(B)	When identifying the embodiments included 
within a multiple dependent claim, or a singular dependent 
claim which includes a reference to a multiple dependent 
claim, either directly or indirectly, each embodiment should 
be identified by using the number of the claims involved, 
starting with the highest, to the extent necessary to specifi-
cally identify each embodiment.

(C)	When all embodiments included within a multiple 
dependent claim or a singular dependent claim which 
includes a reference to a multiple dependent claim, either 
directly or indirectly, are subject to a common rejection, 
objection, or requirement, reference may be made only to 
the number of the dependent claim.

The following table illustrates the current practice where 
each embodiment of each claim must be treated on an indi-
vidual basis:

Claim
No. 
	Claim
dependency
	Identification 
	
		All claims
	Approved 
practice

1
	Independent
	1
	1

2
	Depends from 1
	2/1
	2

3
	Depends from 2
	3/2/1
	3

4
	Depends from 2 
or 3
	4/2/1 
4/3/2/1
	4/2 
4/3

5
	Depends from 3
	5/3/2/1
	5

6
	Depends from 2, 
3, or 5
	6/2/1 
6/3/2/1 
6/5/3/2/1
	6/2 
6/3 
6/5

7
	Depends from 6
	7/6/2/1 
7/6/3/2/1 
7/6/5/3/2/1
	7/6/2 
7/6/3 
7/6/5

When all embodiments in a multiple dependent claim 
situation (claims 4, 6, and 7 above) are subject to a com-
mon rejection, objection, or requirements, reference may be 
made to the number of the individual dependent claim only. 
For example, if 4/2 and 4/3 were subject to a common 
ground of rejection, reference should be made only to claim 
4 in the statement of that rejection.

The provisions of  35 U.S.C. 132 require that each 
Office action make it explicitly clear what rejection, objec-
tion and/or requirement is applied to each claim embodi-
ment.

G.	Fees for Multiple Dependent Claims

1.	Use of Form PTO-1360

To assist in the computation of the fees for multiple 
dependent claims, a separate "Multiple Dependent Claim 
Fee Calculation Sheet," form PTO-1360, has been designed 
for use with the current "Patent Application Fee Determi-
nation Record," form PTO-875. Form PTO-1360 will be 
placed in the file wrapper by the Office of Initial Patent 
Examination (OIPE) where multiple dependent claims are 
in the application as filed. If multiple dependent claims are 
not included upon filing, but are later added by amendment, 
the examining group technical support staff will place the 
form in the file wrapper. If there are multiple dependent 
claims in the application, the total number of independent 
and dependent claims for fee purposes will be calculated on 
form PTO-1360 and the total number of claims and number 
of independent claims is then placed on form PTO-875 for 
final fee calculation purposes.

2.	Calculation of Fees

(a)	Proper Multiple Dependent Claim

35 U.S.C. 41(a), provides that claims in proper multiple 
dependent form may not be considered as single dependent 
claims for the purpose of calculating fees. Thus, a multiple 
dependent claim is considered to be that number of depen-
dent claims to which it refers. Any proper claim depending 
directly or indirectly from a multiple dependent claim is 
also considered as the number of dependent claims as 
referred to in the multiple dependent claim from which it 
depends.

(b)	Improper Multiple Dependent Claim

If any multiple dependent claim is improper, OIPE may 
indicate that fact by placing an encircled numeral "1" in the 
"Dep. Claims" column of form PTO-1360.  The fee for any 
improper multiple dependent claim, whether it is defective 
for either not being in the alternative form or for being 
directly or indirectly dependent on a prior multiple depen-
dent claim, will only be one, since only an objection to the 
form of such a claim will normally be made. This proce-
dure also greatly simplifies the calculation of fees. Any 
claim depending from an improper multiple dependent 
claim will also be considered to be improper and be 
counted as one dependent claim.

(c)	Fee calculation example

i)	Comments On Fee Calculation Example

Claim 1  - This is an independent claim; therefore, a 
numeral  "1" is placed opposite claim number 1 in the 
"Ind." column.

Claim 2  -  Since this is a claim dependent on a single 
independent claim, a numeral "1" is placed opposite claim 
number 2 of the "Dep." column.

Claim 3 -  Claim 3 is also a single dependent claim, so 
a numeral "1" is placed in the "Dep." column.

Claim 4  -  Claim 4 is a proper multiple dependent 
claim. It refers directly to two claims in the alternative, 
namely, claim 2 or 3. Therefore, a numeral "2" to indicate 
direct reference to two claims is placed in the "Dep." col-
umn opposite claim number 4.

Claim 5  -  This claim is a singularly dependent claim 
depending from a multiple dependent claim. For fee calcu-
lation purposes, such a claim is counted as being that num-
ber of claims to which direct reference is made in the 
multiple dependent claim from which it depends. In this 
case, the multiple dependent claim number 4 it depends 
from counts as 2 claims; therefore, claim 5 also counts as 2 
claims. Accordingly, a numeral  "2"  is placed opposite 
claim number 5 in the  "Dep."  column.

Claim 6  -  Claim 6 depends indirectly from a multiple 
dependent claim 4.  Since claim 4 counts as 2 claims, claim 
6 also counts as 2 dependent claims.  Consequently, a 
numeral  "2"  is placed in the  "Dep."  column after claim 6.

Claim 7  -  This claim is a multiple dependent claim 
since it refers to claims 4, 5, or 6.  However, as can be seen 
by looking at the  "2"  in the  "Dep."  column opposite 
claim 4, claim 7 depends from a multiple dependent claim. 
This practice is improper under  35 U.S.C. 112 and  37 CFR 
1.75(c).  Following the procedure for calculating fees for 
improper multiple dependent claims, a numeral  "1"  is 
placed in the "Dep." column with a circle drawn around it 
to alert the examiner that the claim is improper.

Claim 8  -  Claim 8 is improper since it depends from 
an improper claim. If the base claim is in error, this error 
cannot be corrected by adding additional claims depending 
therefrom. Therefore, a numeral "1" with a circle around it 
is placed in the "Dep." column.

Claim 9  -  Here again we have an independent claim 
which is always indicated with a numeral "1" in the "Ind." 
column opposite the claim number.

Claim 10  -  This claim refers to two independent 
claims in the alternative. A numeral "2" is, therefore, 
placed in the "Dep." column opposite claim 10.

Claim 11  -  Claim 11 is a dependent claim which refers 
to two claims in the conjunctive ("1" and "9" ) rather than 
in the alternative ("1" or "9" ). This form is improper under  
35 U.S.C. 112 and  37 CFR 1.75(c). Accordingly, since 
claim 11 is improper, an encircled number "1" is placed in 
the "Dep." column opposite Claim 11.

ii)	Calculation of Fee in Fee Example

After the number of  "Ind." and "Dep." claims are noted 
on form PTO-1360, each column is added. In this example, 
there are 2 independent claims and 13 dependent claims or 
a total of 15 claims. The number of independent and total 
claims can then be placed on form PTO-875 and the fee cal-
culated.

II.	TREATMENT OF IMPROPER DEPENDENT 
CLAIMS

The initial determination, for fee purposes, as to whether 
a claim is dependent must be made by persons other than 
examiners; it is necessary, at that time, to accept as depen-
dent virtually every claim which refers to another claim, 
without determining whether there is actually a true depen-
dent relationship. The initial acceptance of a claim as a 
dependent claim does not, however, preclude a subsequent 
holding by the examiner that a claim is not a proper depen-
dent claim. Any claim which is in dependent form but 
which is so worded that it, in fact is not, as, for example, it 
does not include every limitation of the claim on which it 
depends, will be required to be canceled as not being a 
proper dependent claim; and cancelation of any further 
claim depending on such a dependent claim will be simi-
larly required. Where a claim in dependent form is not con-
sidered to be a proper dependent claim under  37 CFR 
1.75(c), the examiner should object to such claim under  
37 CFR 1.75(c) and require cancellation of such improper 
dependent claim or rewriting of such improper dependent 
claim in independent form. See Ex parte Porter, 
25 USPQ2d 1144, 1147 (Bd. of Pat. App. & Inter. 1992)  
(A claim determined to be an improper dependent claim 
should be treated as a formal matter, in that the claim 
should be objected to and applicant should be required to 
cancel the claim (or replace the improper dependent claim 
with an independent claim) rather than treated by a rejec-
tion of the claim under  35 U.S.C. 112, fourth paragraph.). 
The applicant may thereupon amend the claims to place 
them in proper dependent form, or may redraft them as 
independent claims, upon payment of any necessary addi-
tional fee.

>Note, that although  37 CFR 1.75(c) requires the 
dependent claim to further limit a preceding claim, this rule 
does not apply to product-by-process claims.<

Claims which are in improper dependent form for failing 
to further limit the subject matter of a previous claim 
should be objected to under  37 CFR 1.75(c) by using Form 
Paragraph 7.36. 

?  7.36 Objection, 37 CFR 1.75(c), Improper Dependent Claim

Claim  [1] objected to under  37 CFR 1.75(c), as being of improper 
dependent form for failing to further limit the subject matter of a previous 
claim. Applicant is required to cancel the claim(s), or amend the claim(s) 
to place the claim(s) in proper dependent form, or rewrite the claim(s) in 
independent form. [2].

Examiner Note:

1.	In bracket 2, insert an explanation of what is in the claim and why it 
does not constitute a further limitation.

2.	Note Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 
1992) for situations where a method claim is considered to be properly 
dependent upon a parent apparatus claim and should not be objected to or 
rejected under  35 U.S.C. 112, fourth paragraph. See also  MPEP 
? 608.01(n),  "Infringement Test" for dependent claims. The test for a 
proper dependent claim is whether the dependent claim includes every 
limitation of the parent claim. The test is not whether the claims differ in 
scope.  A proper dependent claim shall not conceivably be infringed  by 
anything which would not also infringe the basic claim.

III.	INFRINGEMENT TEST

The test as to whether a claim is a proper dependent 
claim is that it shall include every limitation of the claim 
from which it depends (35 U.S.C. 112, fourth paragraph) or 
in other words that it shall not conceivably be infringed by 
anything which would not also infringe the basic claim.

A dependent claim does not lack compliance with  
35 U.S.C. 112, fourth paragraph, simply because there is a 
question as to (1) the significance of the further limitation 
added by the dependent claim, or (2) whether the further 
limitation in fact changes the scope of the dependent claim 
from that of the claim from which it depends. The test for a 
proper dependent claim under the fourth paragraph of  
35 U.S.C. 112 is whether the dependent claim includes 
every limitation of the claim from which it depends. The 
test is not one of whether the claims differ in scope.

Thus, for example, if claim 1 recites the combination of 
elements A, B, C, and D, a claim reciting the structure of 
claim 1 in which D was omitted or replaced by E would not 
be a proper dependent claim, even though it placed further 
limitations on the remaining elements or added still other 
elements.

Examiners are reminded that a dependent claim is 
directed to a combination including everything recited in 
the base claim and what is recited in the dependent claim. It 
is this combination that must be compared with the prior 
art, exactly as if it were presented as one independent 
claim.

The fact that a dependent claim which is otherwise 
proper might relate to a separate invention which would 
require a separate search or be separately classified from 
the claim on which it depends would not render it an 
improper dependent claim, although it might result in a 
requirement for restriction.

The fact that the independent and dependent claims are 
in different statutory classes does not, in itself, render the 
latter improper. Thus, if claim 1 recites a specific product, a 
claim for the method of making the product of claim 1 in a 
particular manner would be a proper dependent claim since 
it could not be infringed without infringing claim 1. Simi-
larly, if claim 1 recites a method of making a product, a 
claim for a product made by the method of claim 1 could be 
a proper dependent claim. On the other hand, if claim 1 
recites a method of making a specified product, a claim to 
the product set forth in claim 1 would not be a proper 
dependent claim if the product might be made in other 
ways. 

**

IV.	CLAIM FORM AND ARRANGEMENT

A singular dependent claim 2 could read as follows:

2.	The product of claim 1 in which . . . .

A series of singular dependent claims is permissible in 
which a dependent claim refers to a preceding claim which, 
in turn, refers to another preceding claim.

A claim which depends from a dependent claim should 
not be separated therefrom by any claim which does not 
also depend from said "dependent claim." It should be kept 
in mind that a dependent claim may refer back to any pre-
ceding independent claim. These are are the only restric-
tions with respect to the sequence of claims and, in general, 
applicant's sequence should not be changed. See  MPEP 
? 608.01(j). Applicant may be so advised by using Form 
Paragraph 6.18.

?  6.18 Series of Singular Dependent Claims

A series of singular dependent claims is permissible in which a depen-
dent claim refers to a preceding claim which, in turn, refers to another pre-
ceding claim.

A claim which depends from a dependent claim should not be sepa-
rated by any claim which does not also depend from said dependent 
claim. It should be kept in mind that a dependent claim may refer to any 
preceding independent claim.  In general, applicant's sequence will not be 
changed.  See  MPEP ? 608.01(n).

During prosecution, the order of claims may change and 
be in conflict with the requirement that dependent claims 
refer to a preceding claim. Accordingly, the numbering of 
dependent claims and the numbers of preceding claims 
referred to in dependent claims should be carefully checked 
when claims are renumbered upon allowance.

V.	REJECTION AND OBJECTION

If the base claim has been canceled, a claim which is 
directly or indirectly dependent thereon should be rejected 
as incomplete. If the base claim is rejected, the dependent 
claim should be objected to rather than rejected, if it is oth-
erwise allowable.

Form Paragraph 7.43 can be used to state the objection.

?  7.43 Objection to Claims, Allowable Subject Matter

Claim  [1] objected to as being dependent upon a rejected base claim, 
but would be allowable if rewritten in independent form including all of 
the limitations of the base claim and any intervening claims.

608.01(o)	Basis for Claim Terminology 
in Description

The meaning of every term used in any of the claims 
should be apparent from the descriptive portion of the spec-
ification with clear disclosure as to its import; and in 
mechanical cases, it should be identified in the descriptive 
portion of the specification by reference to the drawing, 
designating the part or parts therein to which the term 
applies. A term used in the claims may be given a special 
meaning in the description. No term may be given a mean-
ing repugnant to the usual meaning of the term.

Usually the terminology of the original claims follows 
the nomenclature of the specification, but sometimes in 
amending the claims or in adding new claims, new terms 
are introduced that do not appear in the specification. The 
use of a confusing variety of terms for the same thing 
should not be permitted.

New claims and amendments to the claims already in the 
case should be scrutinized not only for new matter but also 
for new terminology. While an applicant is not limited to 
the nomenclature used in the application as filed, he or she 
should make appropriate amendment of the specification 
whenever this nomenclature is departed from by amend-
ment of the claims so as to have clear support or antecedent 
basis in the specification for the new terms appearing in the 
claims. This is necessary in order to insure certainty in con-
struing the claims in the light of the specification, Ex parte 
Kotler,   1901 C.D. 62, 95 O.G. 2684 (Comm'r Pat. 1901). 
See  37 CFR 1.75,  MPEP ? 608.01(i) and  ? 1302.01.

The specification should be objected to if it does not pro-
vide proper antecedent basis for the claims by using Form 
Paragraph 7.44.

?  7.44 Claimed Subject Matter Not in Specification

The specification is objected to as failing to provide proper antecedent 
basis for the claimed subject matter.  See  37 CFR 1.75(d)(1) and  MPEP 
? 608.01(o).  Correction of the following is required: [1]

608.01(p)	Completeness  [R-1]

Newly filed applications obviously failing to disclose an 
invention with the clarity required are discussed in  MPEP 
? 702.01.

A disclosure in an application, to be complete, must con-
tain such description and details as to enable any person 
skilled in the art or science to which the invention pertains 
to make and use the invention as of its filing date. In re 
Glass, 492 F.2d 1228, 181 USPQ 31 (CCPA 1974).

While the prior art setting may be mentioned in general 
terms, the essential novelty, the essence of the invention, 
must be described in such details, including proportions 
and techniques, where necessary, as to enable those persons 
skilled in the art to make and utilize the invention.

Specific operative embodiments or examples of the 
invention must be set forth. Examples and description 
should be of sufficient scope as to justify the scope of the 
claims.   Markush claims must be provided with support in 
the disclosure for each member of the Markush group. 
Where the constitution and formula of a chemical com-
pound is stated only as a probability or speculation, the dis-
closure is not sufficient to support claims identifying the 
compound by such composition or formula.

A complete disclosure should include a statement of util-
ity. This usually presents no problem in mechanical cases. 
In chemical cases, varying degrees of specificity are 
required.

A disclosure involving a new chemical compound or 
composition must teach persons skilled in the art how to 
make the compound or composition. Incomplete teachings 
may not be completed by reference to subsequently filed 
applications.

For "Guidelines For Examination Of Applications For 
Compliance With The Utility Requirement of 35 U.S.C. 
101," see  MPEP ? 706.03(a)(1).

For "General Principles Governing Utility Rejections," 
see  MPEP ? 2107.

For a discussion of the utility requirement under 
35 U.S.C. 112, first paragraph, in drug cases, see  MPEP 
? 2107.02 and  ? 2164.06(a). 

For "Procedural Considerations Related to Rejections 
for Lack of Utility," see  MPEP ? 2107.01.

For "Special Considerations for Asserted Therapeutic or 
Pharmacological Utilities," see  MPEP ? 2107.02.

I.	INCORPORATION BY REFERENCE

The Commissioner has considerable discretion in deter-
mining what may or may not be incorporated by reference 
in a patent application. General Electric Co. v.   Brenner, 
407 F.2d 1258, 159 USPQ 335 (D.C. Cir. 1968). The incor-
poration by reference practice with respect to applications 
which issue as U.S. patents provides the public with a 
patent disclosure which minimizes the public's burden to 
search for and obtain copies of documents incorporated by 
reference which may not be readily available.  Through the 
Office's incorporation by reference policy, the Office 
ensures that reasonably complete disclosures are published 
as U.S. patents.  The following is the manner in which the 
Commissioner has elected to exercise that discretion. Sec-
tion A provides the guidance for incorporation by reference 
in applications which are to issue as U.S. patents. Section B 
provides guidance for incorporation by reference in benefit 
applications; i.e., those domestic (35 U.S.C. 120) or foreign 
(35 U.S.C. 119(a)) applications relied on to establish an 
earlier effective filing date.

A.	Review of Applications Which Are To Issue as 
Patents.

An application as filed must be complete in itself in 
order to comply with  35 U.S.C. 112.  Material nevertheless 
may be incorporated by reference,   Ex parte Schwarze, 151 
USPQ 426 (Bd. App. 1966). An application for a patent 
when filed may incorporate "essential material" by refer-
ence to (1) a U.S. patent or (2) a pending U.S. application, 
subject to the conditions set forth below.

"Essential material" is defined as that which is necessary 
to (1) describe the claimed invention, (2) provide an 
enabling disclosure of the claimed invention, or (3) 
describe the best mode (35 U.S.C. 112). In any application 
which is to issue as a U.S. patent, essential material may 
not be incorporated by reference to  (1) patents or applica-
tions published by foreign countries or a regional patent 
office, (2) non-patent publications, (3) a U.S. patent or 
application which itself incorporates "essential material" 
by reference, or (4) a foreign application. 

Nonessential subject matter may be incorporated by ref-
erence to (1) patents or applications published by the 
United States or foreign countries or regional patent 
offices, (2) prior filed, commonly owned U.S. applications, 
or (3) non-patent publications >however, hyperlinks and/or 
other forms of browser executable code cannot be incorpo-
rated by reference. See MPEP ?  608.01<. Nonessential 
subject matter is subject matter referred to for purposes of 
indicating the background of the invention or illustrating 
the state of the art.

Mere reference to another application, patent, or publica-
tion is not an incorporation of anything therein into the 
application containing such reference for the purpose of the 
disclosure required by  35 U.S.C. 112, first paragraph.  In re 
de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973).  
In addition to other requirements for an application, the ref-
erencing application should include an identification of the 
referenced patent, application, or publication. Particular 
attention should be directed to specific portions of the ref-
erenced document where the subject matter being incorpo-
rated may be found. Guidelines for situations where 
applicant is permitted to fill in a number for Application 
No. __________ left blank in the application as filed can be 
found in In re Fouche, 439 F.2d 1237, 169 USPQ 429 
(CCPA 1971) (Abandoned applications less than 20 years 
old can be incorporated by reference to the same extent as 
copending applications; both types are open to the public 
upon the referencing application issuing as a patent. See  
MPEP ? 103).

1.	Complete Disclosure Filed

If an application is filed with a complete disclosure, 
essential material may be canceled by amendment and may 
be substituted by reference to a U.S. patent or an earlier 
filed pending U.S. application. The amendment must be 
accompanied by an affidavit or declaration signed by the 
applicant, or a practitioner representing the applicant, stat-
ing that the material canceled from the application is the 
same material that has been incorporated by reference.

If an application as filed incorporates essential material 
by reference to a U.S. patent or a pending and commonly 
owned U.S. application, applicant may be required prior to 
examination to furnish the Office with a copy of the refer-
enced material together with an affidavit or declaration 
executed by the applicant, or a practitioner representing the 
applicant, stating that the copy consists of the same mate-
rial incorporated by reference in the referencing applica-
tion. However, if a copy of a printed U.S. patent is 
furnished, no affidavit or declaration is required.

Prior to allowance of an application that incorporates 
essential material by reference to a pending U.S. applica-
tion, the examiner shall determine if the referenced applica-
tion has issued as a patent.  If the referenced application has 
issued as a patent, the examiner shall enter the U.S. Patent 
No. of the referenced application in the specification of the 
referencing application (see  MPEP ? 1302.04).  If the ref-
erenced application has not issued as a patent, applicant 
will be required to amend the disclosure of the referencing 
application to include the material incorporated by refer-
ence. The amendment must be accompanied by an affidavit 
or declaration executed by the applicant, or a practitioner 
representing the applicant, stating the amendatory material 
consists of the same material incorporated by reference in 
the referencing application. 

2.	Improper Incorporation

The filing date of any application wherein essential 
material is improperly incorporated by reference to a for-
eign application or patent or to a publication will not be 
affected because of the reference. In such a case, the appli-
cant will be required to amend the specification to include 
the material incorporated by reference. The following form 
paragraphs may be used.

?  6.19 Incorporation by Reference, Foreign Patent or Application

The incorporation of essential material in the specification by reference 
to a foreign application or patent, or to a publication  is improper. Appli-
cant is required to amend the disclosure to include the material incorpo-
rated by reference. The amendment must be accompanied by an affidavit 
or declaration executed by the applicant, or a practitioner representing 
the applicant, stating that the amendatory material consists of the same 
material incorporated by reference in the referencing application. In re 
Hawkins, 486 F.2d 569, 179 USPQ 157 (CCPA 1973); In re Hawkins, 486 
F.2d 579, 179 USPQ 163 (CCPA 1973); In re Hawkins, 486 F.2d 577, 
179 USPQ 167 (CCPA 1973).

?  6.19.01 Improper Incorporation by Reference, General

The attempt to incorporate subject matter into this application by refer-
ence to   [1] is improper because [2].

Examiner Note:

1.	In bracket 1, identify the document such as an application or patent 
number or other identification.

2.	In bracket 2, give reason why it is improper.

The amendment must be accompanied by an affidavit or 
declaration executed by the applicant, or a practitioner rep-
resenting the applicant, stating that the amendatory material 
consists of the same material incorporated by reference in 
the referencing application. In re Hawkins, 486 F.2d 569, 
179 USPQ 157 (CCPA 1973); In re Hawkins, 486 F.2d 579, 
179 USPQ 163 (CCPA 1973); In re Hawkins, 486 F.2d 577, 
179 USPQ 167 (CCPA 1973).

Reliance on a commonly assigned copending application 
by a different inventor may ordinarily be made for the pur-
pose of completing the disclosure. See In re Fried, 329 F.2d 
323, 141 USPQ 27 (CCPA 1964), and General Electric Co. 
v.   Brenner, 407 F.2d 1258, 159 USPQ 335 (D.C. Cir. 
1968).

Since a disclosure must be complete as of the filing date, 
subsequent publications or subsequently filed applications 
cannot be relied on to establish a constructive reduction to 
practice or an enabling disclosure as of the filing date. 
White Consol. Indus., Inc. v. Vega Servo-Control, Inc., 713 
F.2d 788, 218 USPQ 961 (Fed. Cir. 1983); In re Scar-
brough, 500 F.2d 560, 182 USPQ 298 (CCPA 1974); In re 
Glass, 492 F.2d 1228, 181 USPQ 31 (CCPA 1974).

B.	Review of Applications Which Are Relied on To 
Establish an Earlier Effective Filing Date.

The limitations on the material which may be incorpo-
rated by reference in U.S. patent applications which are to 
issue as U.S. patents do not apply to applications relied on 
only to establish an earlier effective filing date under  35 
U.S.C. 119 or  35 U.S.C. 120.  Neither  35 U.S.C. 119(a) 
nor  35 U.S.C. 120 places any restrictions or limitations as 
to how the claimed invention must be disclosed in the ear-
lier application to comply with  35 U.S.C. 112, first para-
graph.  Accordingly, an application is entitled to rely upon 
the filing date of an earlier application, even if the earlier 
application itself incorporates essential material by refer-
ence to another document.  See Ex parte Maziere, 
27 USPQ2d 1705, 1706-07 (Bd. Pat. App. & Inter. 1993).

The reason for incorporation by reference practice with 
respect to applications which are to issue as U.S. patents is 
to provide the public with a patent disclosure which mini-
mizes the public's burden to search for and obtain copies of 
documents incorporated by reference which may not be 
readily available. Through the Office's incorporation by 
reference policy, the Office ensures that reasonably com-
plete disclosures are published as U.S. patents. The same 
policy concern does not apply where the sole purpose for 
which an applicant relies on an earlier U.S. or foreign 
application is to establish an earlier filing date. Incorpora-
tion by reference in the earlier application of (1) patents or 
applications published by foreign countries or regional 
patent offices, (2) nonpatent publications, (3) a U.S. patent 
or application which itself incorporates "essential material" 
by reference, or (4) a foreign application, is not critical in 
the case of a "benefit" application.

When an applicant, or a patent owner in a reexamination 
or interference, claims the benefit of the filing date of an 
earlier application which incorporates material by refer-
ence, the applicant or patent owner may be required to sup-
ply copies of the material incorporated by reference. For 
example, an applicant may claim the benefit of the filing 
date of a foreign application which itself incorporates by 
reference another earlier filed foreign application. If neces-
sary, due to an intervening reference, applicant should be 
required to supply a copy of the earlier filed foreign appli-
cation, along with an English language translation. A 
review can then be made of the foreign application and all 
material incorporated by reference to determine whether 
the foreign application discloses the invention sought to be 
patented in the manner required by the first paragraph of 35 
U.S.C. 112 so that benefit may be accorded. In re Gosteli, 
872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989).

II.	SIMULATED OR PREDICTED TEST 
RESULTS  OR PROPHETIC EXAMPLES

Simulated or predicted test results and prophetical exam-
ples (paper examples) are permitted in patent applications. 
Working examples correspond to work actually performed 
and may describe tests which have actually been conducted 
and results that were achieved. Paper examples describe the 
manner and process of making an embodiment of the 
invention which has not actually been conducted. Paper 
examples should not be represented as work actually done. 
No results should be represented as actual results unless 
they have actually been achieved. Paper examples should 
not be described using the past tense.

For problems arising from the designation of materials 
by trademarks and trade names, see  MPEP ? 608.01(v).

608.01(q)	Substitute or Rewritten  
Specification [R-1]

37 CFR 1.125.  Substitute specification.

(a)	If the number or nature of the amendments or the legibility of 
the application papers renders it difficult to consider the application, or to 
arrange the papers for printing or copying, the Office may require the 
entire specification, including the claims, or any part thereof, be rewritten.

(b)	A substitute specification, excluding the claims, may be filed at 
any point up to payment of the issue fee if it is accompanied by:

(1)	A statement that the substitute specification includes no new 
matter; and

(2)	A marked-up copy of the substitute specification showing 
the matter being added to and the matter being deleted from the specifica-
tion of record.

(c)	A substitute specification submitted under this section must be 
submitted in clean form without markings as to amended material.

(d)	A substitute specification under this section is not permitted in a 
reissue application or in a reexamination proceeding.

The specification is sometimes in such faulty English 
that a new specification is necessary; in such instances, a 
new specification should be required.

Form Paragraph 6.28 may be used where the specifica-
tion is in faulty English.

?  6.28 Idiomatic English

A substitute specification in proper idiomatic English and in compli-
ance with  37 CFR 1.52(a) and (b) is required.  The substitute specification 
filed must be accompanied by a statement that it contains no new matter. 

37 CFR 1.125(a) applies to a substitute specification 
required by the Office.  If the number or nature of the 
amendments or the legibility of the application papers ren-
ders it difficult to consider the application, or to arrange the 
papers for printing or copying, the Office may require the 
entire specification, including the claims, or any part 
thereof be rewritten.

Form Paragraph 6.28.01 may be used where the exam-
iner, for reasons other than faulty English, requires a substi-
tute specification.

**>

?  6.28.01 Substitute Specification Required by Examiner

 A substitute specification [1] the claims is required pursuant to 37 
CFR  1.125(a) because [2].

A substitute specification filed under 37 CFR  1.125(a) must only con-
tain subject matter from the original specification and any previously 
entered amendment under 37 CFR  1.121. If the substitute specification 
contains additional subject matter not of record, the substitute specifica-
tion must be filed under 37 CFR  1.125(b) and must be accompanied by: 
1) a statement that the substitute specification contains no new matter; and 
2) a marked-up copy showing the amendments to be made via the substi-
tute specification relative to the specification at the time the substitute 
specification is filed. 

Examiner Note:

1.	In bracket 1, insert either -- excluding-- or -- including--.  

2.	In bracket 2, insert clear and concise examples of why a new specifi-
cation is required.

3.	A new specification is required if the number or nature of the 
amendments render it difficult to consider the application or to arrange the 
papers for printing or copying, 37 CFR 1.125.

4.	See also form paragraph 13.01 for partial rewritten specification.

5.	37 CFR 1.125(b) provides applicants with the right of entry of sub-
stitute specifications, under the conditions set forth in the section, in appli-
cations other than reissue applications (37 CFR 1.125(d)) that have not 
been required by the examiner.<

37 CFR 1.125(b) applies to a substitute specification 
voluntarily filed by the applicant.  A substitute specifica-
tion, excluding claims, may be voluntarily filed by the 
applicant at any point up to the payment of the issue fee 
provided it is accompanied by (1) a statement that the sub-
stitute specification includes no new matter, and (2) a 
marked-up copy of the substitute specification showing the 
matter being added to and the matter being deleted from the 
specification of record. 37 CFR 1.125(b).  The Office will 
accept a substitute specification voluntarily filed by the 
applicant if the requirements of  37 CFR 1.125(b) are satis-
fied.

37 CFR 1.125(c) requires a substitute specification filed 
under  37 CFR 1.125(a) or (b) be submitted in clean form 
without markings as to amended material. 

**

A substitute specification filed under 37 CFR 1.125(b) 
must be accompanied by a statement indicating that no new 
matter was included. There is no obligation on the exam-
iner to make a detailed comparison between the old and the 
new specifications for determining whether or not new 
matter has been added. If, however, an examiner becomes 
aware that new matter is present, objection thereto should 
be made.

The filing of a substitute specification rather than 
amending the original application has the advantage for 
applicants of eliminating the need to prepare an amendment 
of the specification. If word processing equipment is used 
by applicants, substitute specifications can be easily pre-
pared. The Office receives the advantage of saving the time 
needed to enter amendments in the specification and a 
reduction in the number of printing errors. A substitute 
specification is not permitted in a reissue application or in a 
reexamination proceeding.  37 CFR 1.125(d).

A substitute specification **>which complies with 
37 CFR  1.125 should normally be entered. The examiner 
should write "Enter" or "OK to Enter" and his or her ini-
tials in ink in the left margin of the first page of the substi-
tute specification. A substitute specification which is 
denied entry should be so marked.  

Form Paragraph 6.28.02 may be used to notify applicant 
that a substitute specification submitted under 37 CFR  
1.125(b) has not been entered.

?  6.28.02 Substitute Specification Filed Under 37 CFR 1.125(b) 
Not Entered.

The substitute specification filed [1] has not been entered because it 
does not conform to 37 CFR 1.125(b) because: [2]

Examiner Note:

1.	In bracket 2, insert statement of why the substitute specification is 
improper, for example:

 -- the statement as to a lack of new matter under 37 CFR 1.125(b) is miss-
ing--,

-- a marked-up copy of the substitute specification has not been supplied 
(in addition to the clean copy)--;

-- a clean copy of the substitute specification has not been supplied (in 
addition to the marked-up copy)--; or,

-- the substitute specification has been filed:

- in a reissue application or in a reexamination proceeding, 37 CFR  
1.125(d)-, or

- after payment of the issue fee-, or

- containing claims (to be amended)- --. 

See MPEP ? 714.20 regarding entry of amendments 
which include an unacceptable substitute specification.<

For new matter in amendment, see  MPEP ? 608.04.

For application prepared for issue, see  MPEP ? 1302.02.

608.01(r)	Derogatory Remarks About 
Prior Art in Specification

The applicant may refer to the general state of the art and 
the advance thereover made by his or her invention, but he 
or she is not permitted to make derogatory remarks con-
cerning the inventions of others. Derogatory remarks are 
statements disparaging the products or processes of any 
particular person other than the applicant, or statements as 
to the merits or validity of applications or patents of 
another person. Mere comparisons with the prior art are not 
considered to be disparaging, per se.

608.01(s)	Restoration of Canceled Matter

Canceled text in the specification can be reinstated only 
by a subsequent amendment presenting the previously can-
celed matter as a new insertion. 37 CFR 1.121(a)(1)(iii).  A 
claim canceled by amendment, which was not deleted and 
rewritten, can be reinstated only by a subsequent amend-
ment presenting the claim as a new claim with a new claim 
number. 37 CFR 1.121(a)(2)(ii).  See  MPEP ? 714.24.

608.01(t)	Use in Subsequent Application

A reservation for a future application of subject matter 
disclosed but not claimed in a pending application will not 
be permitted in the pending application.  37 CFR 1.79;  
MPEP ? 608.01(e).

No part of a specification can normally be transferred to 
another application. Drawings may be transferred to 
another application only upon the granting of a petition 
filed under the provisions of  37 CFR 1.182.

608.01(u)	Use of Formerly Filed 
Incomplete Application  

	Parts of an incomplete application which have been 
retained by the Office may be used as part of a complete 
application if the missing parts are later supplied. See  
MPEP ? 506 and  ? 506.01.

608.01(v)	Trademarks and Names Used 
in Trade

The expressions "trademarks" and "names used in trade" 
as used below have the following meanings:

Trademark: a word, letter, symbol, or device adopted by 
one manufacturer or merchant and used to identify and dis-
tinguish his or her product from those of others.  It is a pro-
prietary word, letter, symbol, or device pointing distinctly 
to the product of one producer.

Names Used in Trade: a nonproprietary name by which 
an article or product is known and called among traders or 
workers in the art, although it may not be so known by the 
public, generally. Names used in trade do not point to the 
product of one producer, but they identify a single article or 
product irrespective of producer.

Names used in trade are permissible in patent applica-
tions if:

(A)	Their meanings are established by an accompany-
ing definition which is sufficiently precise and definite to 
be made a part of a claim, or

(B)	In this country, their meanings are well-known 
and satisfactorily defined in the literature.

Condition (A) or (B) must be met at the time of filing of 
the complete application.

TRADEMARKS

The relationship between a trademark and the product it 
identifies is sometimes indefinite, uncertain, and arbitrary. 
The formula or characteristics of the product may change 
from time to time and yet it may continue to be sold under 
the same trademark. In patent specifications, every element 
or ingredient of the product should be set forth in 
positive, exact, intelligible language, so that there will be 
no uncertainty as to what is meant. Arbitrary trademarks 
which are liable to mean different things at the pleasure of 
manufacturers do not constitute such language. Ex Parte 
Kattwinkle, 12 USPQ 11 (Bd. App. 1931).

However, if the product to which the trademark refers is 
set forth in such language that its identity is clear, the 
examiners are authorized to permit the use of the trademark 
if it is distinguished from common descriptive nouns by 
capitalization. If the trademark has a fixed and definite 
meaning, it constitutes sufficient identification unless some 
physical or chemical characteristic of the article or material 
is involved in the invention. In that event, as also in those 
cases where the trademark has no fixed and definite mean-
ing, identification by scientific or other explanatory lan-
guage is necessary. In re Gebauer-Fuelnegg, 121 F.2d 505, 
50 USPQ 125 (CCPA 1941).

The matter of sufficiency of disclosure must be decided 
on an individual case-by-case basis. In re Metcalfe, 
410 F.2d 1378, 161 USPQ 789 (CCPA 1969).

Where the identification of a trademark is introduced by 
amendment, it must be restricted to the characteristics of 
the product known at the time the application was filed to 
avoid any question of new matter.

If proper identification of the product sold under a trade-
mark, or a product referred to only by a name used in trade, 
is omitted from the specification and such identification is 
deemed necessary under the principles set forth above, the 
examiner should hold the disclosure insufficient and reject 
on the ground of insufficient disclosure any claims based 
on the identification of the product merely by trademark or 
by the name used in trade. If the product cannot be other-
wise defined, an amendment defining the process of its 
manufacture may be permitted. Such amendments must be 
supported by satisfactory showings establishing that the 
specific nature or process of manufacture of the product as 
set forth in the amendment was known at the time of filing 
of the application.

Although the use of trademarks having definite mean-
ings is permissible in patent applications, the proprietary 
nature of the marks should be respected. Trademarks 
should be identified by capitalizing each letter of the mark 
(in the case of word or letter marks) or otherwise indicating 
the description of the mark (in the case of marks in the form 
of a symbol or device or other nontextual form). Every 
effort should be made to prevent their use in any manner 
which might adversely affect their validity as trademarks.

Form Paragraph 6.20 may be used.

?  6.20 Trademarks and Their Use

The use of the trademark   [1] has been noted in this application.  It 
should be capitalized wherever it appears and be accompanied by the 
generic terminology.

Although the use of trademarks is permissible in patent applications, 
the proprietary nature of the marks should be respected and every effort 
made to prevent their use in any manner which might adversely affect 
their validity as trademarks.

Examiner Note:

Capitalize each letter of the word in the bracket or include a proper 
trademark symbol, such as ? or  ? following the word.

The examiner should not permit the use of language such 
as "the product X (a descriptive name) commonly known 
as Y (trademark)" since such language does not bring out 
the fact that the latter is a trademark. Language such as "the 
product X (a descriptive name) sold under the trademark 
Y" is permissible.

The use of a trademark in the title of an application 
should be avoided as well as the use of a trademark coupled 
with the word "type", e.g., "Band-Aid type bandage." 

In the event that the proprietary trademark is a "symbol 
or device" depicted in a drawing, either the brief descrip-
tion of the drawing or the detailed description of the draw-
ing should specify that the "symbol or device" is a 
registered trademark of Company X.

The owner of a trademark may be identified in the speci-
fication.

Group directors should reply to all trademark misuse 
complaint letters and forward a copy to the editor of this 
manual.

See Appendix I for a partial listing of trademarks and the 
particular goods to which they apply.

INCLUSION OF COPYRIGHT OR MASK WORK 
NOTICE IN PATENTS

37 CFR 1.71.  Detailed description and specification of the 
invention

*****

(d)	A copyright or mask work notice may be placed in a design or 
utility patent application adjacent to copyright and mask work material 
contained therein. The notice may appear at any appropriate portion of the 
patent application disclosure. For notices in drawings, see ? 1.84(s). The 
content of the notice must be limited to only those elements provided for 
by law. For example, "?1983 John Doe" (17 U.S.C. 401) and "*M* John 
Doe" (17 U.S.C. 909) would be properly limited and, under current stat-
utes, legally sufficient notices of copyright and mask work, respectively. 
Inclusion of a copyright or mask work notice will be permitted only if the 
authorization language set forth in paragraph (e) of this section is included 
at the beginning (preferably as the first paragraph) of the specification.

(e)	The authorization shall read as follows:

A portion of the disclosure of this patent document contains mate-
rial which is subject to (copyright or mask work) protection. The 
(copyright or mask work) owner has no objection to the facsimile 
reproduction by anyone of the patent document or the patent disclo-
sure, as it appears in the Patent and Trademark Office patent file or 
records, but otherwise reserves all (copyright or mask work) rights 
whatsoever.

37 CFR 1.84.  Standards for drawings

*****

(s)	Copyright or Mask Work Notice.  A copyright or mask work 
notice may appear in the drawing, but must be placed within the sight of 
the drawing immediately below the figure representing the copyright or 
mask work material and be limited to letters having a print size of .32 cm. 
to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be lim-
ited to only those elements provided for by law. For example, " ?1983 
John Doe"  (17 U.S.C. 401) and  "*M* John Doe" (17 U.S.C. 909) would 
be properly limited and, under current statutes, legally sufficient notices of 
copyright and mask work, respectively. Inclusion of a copyright or mask 
work notice will be permitted only if the authorization language set forth 
in ? 1.71(e) is included at the beginning (preferably as the first paragraph) 
of the specification.

*****

The Patent and Trademark Office will permit the inclu-
sion of a copyright or mask work notice in a design or util-
ity patent application, and thereby any patent issuing 
therefrom,which discloses material on which copyright or 
mask work protection has previously been established, 
under the following conditions:

(A)	The copyright or mask work notice must be placed 
adjacent to the copyright or mask work material. Therefore, 
the notice may appear at any appropriate portion of the 
patent application disclosure, including the drawing. How-
ever, if appearing in the drawing, the notice must comply 
with  37 CFR 1.84(s). If placed on a drawing in conform-
ance with these provisions, the notice will not be objected 
to as extraneous matter under  37 CFR 1.84.

(B)	The content of the notice must be limited to only 
those elements required by law. For example, "?1983 John 
Doe"(17 U.S.C. 401) and "*M* John Doe" (17 U.S.C. 909) 
would be properly limited, and under current statutes, 
legally sufficient notices of copyright and mask work 
respectively.

(C)	Inclusion of a copyright or mask work notice will 
be permitted only if the following authorization in  37 CFR 
1.71(e) is included at the beginning (preferably as the first 
paragraph) of the specification to be printed for the patent:

A portion of the disclosure of this patent document contains 
material which is subject to (copyright or mask work) protection. 
The (copyright or mask work) owner has no objection to the fac-
simile reproduction by any one of the patent disclosure, as it 
appears in the Patent and Trademark Office patent files or 
records, but otherwise reserves all (copyright or mask work) 
rights whatsoever.

(D)	Inclusion of a copyright or mask work notice after 
a Notice of Allowance has been mailed will be permitted 
only if the criteria of  37 CFR 1.312 have been satisfied.

The inclusion of a copyright or mask work notice in a 
design or utility patent application, and thereby any patent 
issuing therefrom, under the conditions set forth above will 
serve to protect the rights of the author/inventor, as well as 
the public, and will serve to promote the mission and goals 
of the Patent and Trademark Office. Therefore, the inclu-
sion of a copyright or mask work notice which complies 
with these conditions will be permitted. However, any 
departure from these conditions may result in a refusal to 
permit the desired inclusion. If the authorization required 
under condition (C) above does not include the specific lan-
guage "(t)he (copyright or mask work) owner has no objec-
tion to the facsimile reproduction by anyone of the patent 
document or the patent disclosure, as it appears in the 
Patent and Trademark Office patent files or records, ..." the 
notice will be objected to as improper by the examiner of 
the application. If the examiner maintains the objection 
upon reconsideration, a petition may be filed in accordance 
with  37 CFR 1.181.

608.02	Drawing [R-1]

35 U.S.C. 113.  Drawings.

The applicant shall furnish a drawing where necessary for the under-
standing of the subject matter to be patented. When the nature of such sub-
ject matter admits of illustration by a drawing and the applicant has not 
furnished such a drawing, the Commissioner may require its submission 
within a time period of not less than two months from the sending of a 
notice thereof. Drawings submitted after the filing date of the application 
may not be used (i) to overcome any insufficiency of the specification due 
to lack of an enabling disclosure or otherwise inadequate disclosure 
therein, or (ii) to supplement the original disclosure thereof for the pur-
pose of interpretation of the scope of any claim.

37 CFR 1.81.  Drawings required in patent application.

(a)	The applicant for a patent is required to furnish a drawing of his 
or her invention where necessary for the understanding of the subject mat-
ter sought to be patented; this drawing , or a high quality copy thereof, 
must be filed with the application. Since corrections are the responsibility 
of the applicant, the original drawing(s) should be retained by the appli-
cant for any necessary future correction.

(b)	Drawings may include illustrations which facilitate an under-
standing of the invention (for example, flow sheets in cases of processes, 
and diagrammatic views).

(c)	Whenever the nature of the subject matter sought to be patented 
admits of illustration by a drawing without its being necessary for the 
understanding of the subject matter and the applicant has not furnished 
such a drawing, the examiner will require its submission within a time 
period of not less than two months from the date of the sending of a notice 
thereof.

(d)	Drawings submitted after the filing date of the application may 
not be used to overcome any insufficiency of the specification due to lack 
of an enabling disclosure or otherwise inadequate disclosure therein, or to 
supplement the original disclosure thereof for the purpose of interpretation 
of the scope of any claim.

37 CFR 1.84.  Standards for drawings.

(a)	Drawings. There are two acceptable categories for presenting 
drawings in utility patent applications:

(1)	Black ink. Black and white drawings are normally required. 
India ink, or its equivalent that secures solid black lines, must be used for 
drawings, or 

(2)	Color. On rare occasions, color drawings may be necessary 
as the only practical medium by which to disclose the subject matter 
sought to be patented in a utility patent application or the subject matter of 
a statutory invention registration. The Patent and Trademark Office will 
accept color drawings in utility patent applications and statutory invention 
registrations only after granting a petition filed under this paragraph 
explaining why the color drawings are  necessary. Any such petition must 
include the following:

(i)	The fee set forth in ? 1.17(i);

(ii)	Three (3) sets of color drawings; and

(iii)	The specification must contain the following language as 
the first paragraph in that portion of the specification relating to the brief 
description of the drawing:

The file of this patent contains at least one drawing executed in 
color. Copies of this patent with color drawing(s) will be provided 
by the Patent and Trademark Office upon request and payment of 
the necessary fee.

If the language is not in the specification, a proposed amendment to 
insert the language must accompany the petition.

(b)	Photographs.

(1)	Black and white.  Photographs are not ordinarily permitted in 
utility patent applications.  However, the Office will accept photographs in 
utility patent applications only after the granting of a petition filed under 
this paragraph which requests that photographs be accepted. Any such 
petition must include the following:

(i)	The fee set forth in ? 1.17(i); and

(ii)	Three (3) sets of photographs. Photographs must either 
be developed on double weight photographic paper or be permanently 
mounted on bristol board. The photographs must be of sufficient quality so 
that all details in the drawings are reproducible in the printed patent.

(2)	Color.  Color photographs will be accepted in utility patent 
applications if the conditions for accepting color drawings have been satis-
fied.  See paragraph (a)(2) of this section.

(c)	Identification of drawings.  Identifying indicia, if provided, 
should include the application number or the title of the invention, inven-
tor's name, docket number (if any), and the name and telephone number of 
a person to call if the Office is unable to match the drawings to the proper 
application. This information should be placed on the back of each sheet 
of drawings a minimum distance of 1.5 cm. (5/8 inch) down from the top 
of the page. In addition, a reference to the application number, or, if an 
application number has not been assigned, the inventor's name, may be 
included in the left-hand corner, provided that the reference appears within 
1.5 cm. (5/8 inch) from the top of the sheet.

(d)	Graphic forms in drawings. Chemical or mathematical formu-
lae, tables, and waveforms may be submitted as drawings and are subject 
to the same requirements as drawings. Each chemical or mathematical for-
mula must be labeled as a separate figure, using brackets when necessary, 
to show that information is properly integrated. Each group of waveforms 
must be presented as a single figure, using a common vertical axis with 
time extending along the horizontal axis. Each individual waveform dis-
cussed in the specification must be identified with a separate letter desig-
nation adjacent to the vertical axis. 

(e)	Type of paper. Drawings submitted to the Office must be made 
on paper which is flexible, strong, white, smooth, nonshiny, and durable. 
All sheets must be free from cracks, creases, and folds. Only one side of 
the sheet shall be used for the drawing. Each sheet must be reasonably free 
from erasures and must be free from alterations, overwritings, and interlin-
eations. Photographs must either be developed on double weight photo-
graphic paper or be permanently mounted on bristol board. See paragraph 
(b) of this section for other requirements for photographs.

(f)	 Size of paper. All drawing sheets in an application must be the 
same size. One of the shorter sides of the sheet is regarded as its top. The 
size of the sheets on which drawings are made must be:

(1)	21.0 cm. by 29.7 cm. (DIN size A4), or

(2)	21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).

(g)	Margins.  The sheets must not contain frames around the sight 
(i.e., the usable surface), but should have scan target points (i.e., cross-
hairs) printed on two catercorner margin corners.  Each sheet must include 
a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 
cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bot-
tom margin of at least 1.0 cm. (3/8 inch), thereby leaving a sight no greater 
than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing 
sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8 
inches) on 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.

(h)	Views. The drawing must contain as many views as necessary to 
show the invention. The views may be plan, elevation, section, or perspec-
tive views. Detail views of portions of elements, on a larger scale if neces-
sary, may also be used. All views of the drawing must be grouped together 
and arranged on the sheet(s) without wasting space, preferably in an 
upright position, clearly separated from one another, and must not be 
included in the sheets containing the specifications, claims, or abstract. 
Views must not be connected by projection lines and must not contain cen-
ter lines. Waveforms of electrical signals may be connected by dashed 
lines to show the relative timing of the waveforms.

(1)	Exploded views. Exploded views, with the separated parts 
embraced by a bracket, to show the relationship or order of assembly of 
various parts are permissible. When an exploded view is shown in a figure 
which is on the same sheet as another figure, the exploded view should be 
placed in brackets.

(2)	Partial views.  When necessary, a view of a large machine or 
device in its entirety may be broken into partial views on a single sheet, or 
extended over several sheets if there is no loss in facility of understanding 
the view. Partial views drawn on separate sheets must always be capable 
of being linked edge to edge so that no partial view contains parts of 
another partial view. A smaller scale view should be included showing the 
whole formed by the partial views and indicating the positions of the parts 
shown. When a portion of a view is enlarged for magnification purposes, 
the view and the enlarged view must each be labeled as separate views.

(i)	Where views on two or more sheets form, in effect, a sin-
gle complete view, the views on the several sheets must be so arranged 
that the complete figure can be assembled without concealing any part of 
any of the views appearing on the various sheets.

(ii)	A very long view may be divided into several parts 
placed one above the other on a single sheet. However, the relationship 
between the different parts must be clear and unambiguous. 

(3)	Sectional views. The plane upon which a sectional view is 
taken should be indicated on the view from which the section is cut by a 
broken line. The ends of the broken line should be designated by Arabic or 
Roman numerals corresponding to the view number of the sectional view, 
and should have arrows to indicate the direction of sight. Hatching must 
be used to indicate section portions of an object, and must be made by reg-
ularly spaced oblique parallel lines spaced sufficiently apart to enable the 
lines to be distinguished without difficulty. Hatching should not impede 
the clear reading of the reference characters and lead lines. If it is not pos-
sible to place reference characters outside the hatched area, the hatching 
may be broken off wherever reference characters are inserted. Hatching 
must be at a substantial angle to the surrounding axes or principal lines, 
preferably 45?.  A cross section must be set out and drawn to show all of 
the materials as they are shown in the view from which the cross section 
was taken. The parts in cross section must show proper material(s) by 
hatching with regularly spaced parallel oblique strokes, the space between 
strokes being chosen on the basis of the total area to be hatched. The vari-
ous parts of a cross section of the same item should be hatched in the same 
manner and should accurately and graphically indicate the nature of the 
material(s) that is illustrated in cross section. The hatching of juxtaposed 
different elements must be angled in a different way. In the case of large 
areas, hatching may be confined to an edging drawn around the entire 
inside of the outline of the area to be hatched. Different types of hatching 
should have different conventional meanings as regards the nature of a 
material seen in cross section.

(4)	Alternate position.  A moved position may be shown by a 
broken line superimposed upon a suitable view if this can be done without 
crowding; otherwise, a separate view must be used for this purpose. 

(5)	Modified forms. Modified forms of construction must be 
shown in separate views.  

(i)	Arrangement of views. One view must not be placed upon 
another or within the outline of another. All views on the same sheet 
should stand in the same direction and, if possible, stand so that they can 
be read with the sheet held in an upright position.  If views wider than the 
width of the sheet are necessary for the clearest illustration of the inven-
tion, the sheet may be turned on its side so that the top of the sheet, with 
the appropriate top margin to be used as the heading space, is on the right-
hand side. Words must appear in a horizontal, left-to-right fashion when 
the page is either upright or turned so that the top becomes the right side, 
except for graphs utilizing standard scientific convention to denote the 
axis of abscissas (of X) and the axis of ordinates (of Y).

(j)	View for Official Gazette. One of the views should be suitable 
for publication in the Official Gazette as the illustration of the invention.

(k)	Scale. 

(1)	The scale to which a drawing is made must be large enough 
to show the mechanism without crowding when the drawing is reduced in 
size to two-thirds in reproduction. Views of portions of the mechanism on 
a larger scale should be used when necessary to show details clearly. Two 
or more sheets may be used if one does not give sufficient room. The num-
ber of sheets should be kept to a minimum. 

(2)	When approved by the examiner, the scale of the drawing 
may be graphically represented. Indications such as "actual size" or "scale 
1/2" on the drawings, are not permitted, since these lose their meaning 
with reproduction in a different format.

(3)	Elements of the same view must be in proportion to each 
other, unless a difference in proportion is indispensable for the clarity of 
the view. Instead of showing elements in different proportion, a supple-
mentary view may be added giving a larger-scale illustration of the ele-
ment of the initial view. The enlarged element shown in the second view 
should be surrounded by a finely drawn or "dot-dash" circle in the first 
view indicating its location without obscuring the view.

(l)	Character of lines, numbers, and letters.  All drawings must 
be made by a process which will give them satisfactory reproduction char-
acteristics. Every line, number, and letter must be durable, clean, black 
(except for color drawings), sufficiently dense and dark, and uniformly 
thick and well-defined. The weight of all lines and letters must be heavy 
enough to permit adequate reproduction. This requirement applies to all 
lines however fine, to shading, and to lines representing cut surfaces in 
sectional views. Lines and strokes of different thicknesses may be used in 
the same drawing where different thicknesses have a different meaning. 

(m)	Shading.  The use of shading in views is encouraged if it aids in 
understanding the invention and if it does not reduce legibility.  Shading is 
used to indicate the surface or shape of spherical, cylindrical, and conical 
elements of an object. Flat parts may also be lightly shaded. Such shading 
is preferred in the case of parts shown in perspective, but not for cross sec-
tions.  See paragraph (h)(3) of this section. Spaced lines for shading are 
preferred. These lines must be thin, as few in number as practicable, and 
they must contrast with the rest of the drawings.  As a substitute for shad-
ing, heavy lines on the shade side of objects can be used except where they 
superimpose on each other or obscure reference characters.  Light should 
come from the upper left corner at an angle of 45?.  Surface delineations 
should preferably be shown by proper shading. Solid black shading areas 
are not permitted, except when used to represent bar graphs or color.

(n)	Symbols. Graphical drawing symbols may be used for conven-
tional elements when appropriate. The elements for which such symbols 
and labeled representations are used must be adequately identified in the 
specification. Known devices should be illustrated by symbols which have 
a universally recognized conventional meaning and are generally accepted 
in the art. Other symbols which are not universally recognized may be 
used, subject to approval by the Office, if they are not likely to be con-
fused with existing conventional symbols, and if they are readily identifi-
able.  

(o)	Legends  .  Suitable descriptive legends may be used, or may be 
required by the Examiner, where necessary for understanding of the draw-
ing, subject to approval by the Office.  They should contain as few words 
as possible.

(p)	Numbers, letters, and reference characters. 

(1)	Reference characters (numerals are preferred), sheet num-
bers, and view numbers must be plain and legible, and must not be used in 
association with brackets or inverted commas, or enclosed within outlines, 
e.g., encircled. They must be oriented in the same direction as the view so 
as to avoid having to rotate the sheet.  Reference characters should be 
arranged to follow the profile of the object depicted.

(2)	The English alphabet must be used for letters, except where 
another alphabet is customarily used, such as the Greek alphabet to indi-
cate angles, wavelengths, and mathematical formulas.

(3)	Numbers, letters, and reference characters must measure at 
least .32 cm. (1/8 inch) in height. They should not be placed in the draw-
ing so as to interfere with its comprehension. Therefore, they should not 
cross or mingle with the lines. They should not be placed upon hatched or 
shaded surfaces. When necessary, such as indicating a surface or cross 
section, a reference character may be underlined and a blank space may be 
left in the hatching or shading where the character occurs so that it appears 
distinct.

(4)	The same part of an invention appearing in more than one 
view of the drawing must always be designated by the same reference 
character, and the same reference character must never be used to desig-
nate different parts. 

(5)	Reference characters not mentioned in the description shall 
not appear in the drawings. Reference characters mentioned in the descrip-
tion must appear in the drawings.

(q)	Lead lines. Lead lines are those lines between the reference 
characters and the details referred to. Such lines may be straight or curved 
and should be as short as possible. They must originate in the immediate 
proximity of the reference character and extend to the feature indicated. 
Lead lines must not cross each other.  Lead lines are required for each ref-
erence character except for those which indicate the surface or cross sec-
tion on which they are placed. Such a reference character must be 
underlined to make it clear that a lead line has not been left out by mistake. 
Lead lines must be executed in the same way as lines in the drawing. See 
paragraph (l) of this section. 

(r)	Arrows. Arrows may be used at the ends of lines, provided that 
their meaning is clear, as follows:

(1)	On a lead line, a freestanding arrow to indicate the entire 
section towards which it points;

(2)	On a lead line, an arrow touching a line to indicate the sur-
face shown by the line looking along the direction of the arrow; or

(3)	To show the direction of movement.

(s)	Copyright or Mask Work Notice. A copyright or mask work 
notice may appear in the drawing, but must be placed within the sight of 
the drawing immediately below the figure representing the copyright or 
mask work material and be limited to letters having a print size of .32 cm. 
to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be lim-
ited to only those elements provided for by law. For example, " ?1983 
John Doe" (17 U.S.C. 401) and "M. John Doe" (17 U.S.C. 909) would be 
properly limited and, under current statutes, legally sufficient notices of 
copyright and mask work, respectively. Inclusion of a copyright or mask 
work notice will be permitted only if the authorization language set forth 
in ? 1.71(e) is included at the beginning (preferably as the first paragraph) 
of the specification.

(t)	Numbering of sheets of drawings. The sheets of drawings 
should be numbered in consecutive Arabic numerals, starting with 1, 
within the sight as defined in paragraph (g) of this section. These numbers, 
if present, must be placed in the middle of the top of the sheet, but not in 
the margin. The numbers can be placed on the right-hand side if the draw-
ing extends too close to the middle of the top edge of the usable surface. 
The drawing sheet numbering must be clear and larger than the numbers 
used as reference characters to avoid confusion. The number of each sheet 
should be shown by two Arabic numerals placed on either side of an 
oblique line, with the first being the sheet number and the second being 
the total number of sheets of drawings, with no other marking. 

(u)	Numbering of views. 

(1)	The different views must be numbered in consecutive Arabic 
numerals, starting with 1, independent of the numbering of the sheets and, 
if possible, in the order in which they appear on the drawing sheet(s). Par-
tial views intended to form one complete view, on one or several sheets, 
must be identified by the same number followed by a capital letter. View 
numbers must be preceded by the abbreviation "FIG."  Where only a sin-
gle view is used in an application to illustrate the claimed invention, it 
must not be numbered and the abbreviation "FIG." must not appear. 

(2)	Numbers and letters identifying the views must be simple 
and clear and must not be used in association with brackets, circles, or 
inverted commas. The view numbers must be larger than the numbers used 
for reference characters. 

(v)	Security markings. Authorized security markings may be placed 
on the drawings provided they are outside the sight, preferably centered in 
the top margin. 

(w)	Corrections. Any corrections on drawings submitted to the 
Office must be durable and permanent.

(x)	Holes. No holes should be made by applicant in the drawing 
sheets.

>(See ? 1.152 for design drawings, ? 1.165 for plant drawings, and 
? 1.174 for reissue drawings.)<

Drawings on paper are acceptable as long as they are in 
compliance with  37 CFR 1.84. Corrections thereto must be 
made in the form of replacement sheets since the Office 
does not release drawings for correction.  See 37 CFR 1.85.

Good quality copies made on office copiers are accept-
able if the lines are uniformly thick, black, and solid. Fac-
simile copies of drawings however, are not acceptable 
(37 CFR 1.6(d)(4)).

Drawings are currently accepted in two different size 
formats. It is, however, required that all drawings in a par-
ticular application be the same size for ease of handling and 
reproduction.

>For examples of proper drawings, in addition to 
selected rules of practice related to patent drawings and 
interpretations of those rules, see the "Guide for the Prepa-
ration of Patent Drawings" which is available from the 
Superintendent of Documents (see MPEP Introduction). 

For information regarding certified copies of an applica-
tion-as-filed which does not meet the sheet size/margin 
and quality requirements of 37 CFR 1.52, 1.84(f), and  
1.84(g), see MPEP ?  608.01.<

For design patent drawings, 37 CFR 1.152, see MPEP 
? 1503.02.

For plant patent drawings, 37 CFR 1.165, see MPEP 
? 1606.

For reissue application drawings, see  MPEP ? 1413.

For correction of drawings, see  MPEP ? 608.02(p). For 
prints, preparation and distribution, see  MPEP ? 508 and  
? 608.02(m). For prints, return of drawings, see MPEP 
? 608.02(y).

For pencil notations of classification and name or initials 
of assistant examiner to be placed on drawings, see  MPEP 
? 719.03.

The filing of a divisional or continuation case under the 
provisions of  37 CFR 1.53(b) (unexecuted case) does not 
obviate the need for formal drawings. See MPEP 
? 608.02(b).

DEFINITIONS

A number of different terms are used when referring to 
drawings in patent applications. The following definitions 
are used in this Manual.

Original drawings: The drawing submitted with the 
application when filed. It may be either a formal or an 
informal drawing.

Substitute drawing: A drawing filed later than the filing 
date of an application. Usually submitted to replace an orig-
inal informal drawing.

Formal drawing: A drawing in a form that complies with  
37 CFR 1.84. Formal drawings are stamped "approved" by 
the Draftsperson. 

Informal drawing: A drawing which does not comply 
with the form requirements of 37 CFR 1.84 >or which is 
declared as informal when filed<. Drawings may be infor-
mal because they are not on the proper size sheets, the qual-
ity of the lines is poor, or for other reasons such as the size 
of reference elements.  Such objections are made by the 
*>Draftsperson< on form PTO-948. >A drawing declared 
as informal by the applicant when filed is not reviewed by 
the Draftsperson for compliance with 37 CFR 1.84. A sub-
stitute form PTO-948 is placed in the file to indicate that 
the drawings were filed as informal.<

Drawing print: This term is used for the white paper 
print prepared by the *>Scanning< Division of the Office 
of Initial Patent Examination (OIPE) of all original draw-
ings. The drawing prints contain the **>application num-
ber near the left-hand margin.< Drawing prints should be 
placed on the top on the right-hand flap of the application 
file wrapper.

Interference print: This term is used to designate the 
copy prepared of the original drawings filed in file cabinets 
separate from the file wrappers and are used to make inter-
ference searches.

Plan:  This term is used to illustrate the top view.

Elevation:  This term is used to illustrate views showing 
the height of objects.

The following Form Paragraphs should be used when 
notifying applicants of drawing corrections.

?  6.38 Acknowledgment of Proposed Drawing Correction

The proposed drawing correction and/or the proposed substitute sheets 
of drawings, filed on   [1] have been   [2].

Examiner Note:

1.	In bracket 2, insert either --approved-- or --disapproved--.

2.	If approved, form paragraph 6.39 and one or more of paragraphs 
6.40 or 6.41 or 6.44 must follow.

3.	If disapproved, an explanation must be provided.

?  6.38.01 Proposed Drawing Correction Disapproved, Changes 
Not Highlighted

The proposed drawing correction filed on [1] has been disapproved 
because it is not in the form of a pen-and-ink sketch showing changes 
in red ink or with the changes otherwise highlighted. See MPEP 
? 608.02(v).

?  6.38.02 Proposed Drawing Correction Disapproved, New 
Matter

The proposed drawing correction and/or the proposed substitute sheets 
of drawings, filed on [1] have been disapproved because they introduce 
new matter into the drawings. 37 CFR 1.121(a)(6) states that no amend-
ment may introduce new matter into the disclosure of an application.  The 
original disclosure does not support the showing of [2].

Examiner Note:

In bracket 2, explain which feature(s) of the proposed drawing correc-
tion constitute(s) new matter.

?  6.39 PTO No Longer Makes Drawing Changes

The Patent and Trademark Office no longer makes drawing changes.  
See 1017 O.G. 4.  It is applicant's responsibility to ensure that the drawings 
are corrected.  Corrections must be made in accordance with the instruc-
tions below.

Examiner Note:

This paragraph is to be used whenever the applicant has filed a request 
for the Office to make drawing changes.  Form paragraph 6.40 must fol-
low.

?  6.40 Information on How To Effect Drawing Changes

INFORMATION ON HOW TO EFFECT DRAWING CHANGES

1. Correction of Informalities -- 37 CFR 1.85; 1097 O.G. 36

New formal drawings must be filed with the changes incorporated 
therein.  The art unit number, application number (including series code) 
and number of drawing sheets should be written on the reverse side of the 
drawings.  Applicant may delay filing of the new drawings until receipt of 
the "Notice of Allowability" (PTOL-37 or PTO-37).  If delayed, the new 
drawings MUST be filed within the THREE MONTH shortened statu-
tory period set for  reply in the "Notice of Allowability" to avoid extension 
of time fees. Extensions of time may be obtained under the provisions of  
37 CFR 1.136(a) for filing the corrected drawings (but not for payment of 
the issue fee).  The drawings should be filed as a separate paper with a 
transmittal letter addressed to the Official Draftsperson.

2. Corrections other than Informalities Noted by Draftsperson on 
form PTO-948.

All changes to the drawings, other than informalities noted by the 
Draftsperson, MUST be made in the same manner as above except that, 
normally, a highlighted (preferably red ink) sketch of the changes to be 
incorporated into the new drawings MUST be approved by the examiner 
before the application will be allowed.  No changes will be permitted to be 
made, other than correction of informalities, unless the examiner has 
approved the proposed changes.

Timing of Corrections

Applicant is required to submit acceptable corrected drawings within 
the three month shortened statutory period set in the "Notice of Allowabil-
ity".  Within that three month period, two weeks should be allowed for 
review of the new drawings by the Office.  If a correction is determined to 
be unacceptable by the Office, applicant must arrange to have an accept-
able correction re-submitted within the original three month period to 
avoid the necessity of obtaining an extension of time with extension fees.  
Therefore, applicant should file corrected drawings as soon as possible.

Failure to take corrective action within the set (or extended) period will 
result in ABANDONMENT of the application.

?  6.41 Reminder That PTO No Longer Makes Drawing Changes

Applicant is reminded that the Patent and Trademark Office no longer 
makes drawing changes and that it is applicant's responsibility to ensure 
that the drawings are corrected in accordance with the instructions set 
forth in Paper No. [1], mailed on   [2].

Examiner Note:

This paragraph is to be used when the applicant has been previously 
provided with information on how to effect drawing changes (i.e., either 
by way of form paragraph 6.40 or a PTO-948 has been previously sent).

?  6.42 Reminder That Applicant Must Make Drawing Changes

Applicant is reminded that in order to avoid an abandonment of this 
application, the drawings must be corrected in accordance with the 
instructions set forth in Paper No.  [1], mailed on [2].

Examiner Note:

This paragraph is to be used when allowing the application and when 
applicant has previously been provided with information on how to effect 
drawing changes (i.e., by way of form paragraph 6.40 or a PTO-948 has 
been previously sent).

?  6.43 Drawings Contain Informalities, Application Allowed

The drawings filed on [1] are acceptable subject to correction of the 
informalities indicated on the attached "Notice of Draftsperson's Patent 
Drawing Review," PTO-948.  In order to avoid abandonment of this appli-
cation, correction is required.

Examiner Note:

Use this paragraph when allowing the application, particularly at time 
of first action issue.  Form paragraph 6.40 or 6.41 must follow.

?  6.44 Drawing Informalities Previously Indicated

In order to avoid abandonment, the drawing informalities noted in 
Paper No. [1], mailed on [2], must now be corrected.  Correction can only 
be effected in the manner set forth in the above noted paper.

Examiner Note:

Use this paragraph when allowing the application and applicant has 
previously been informed of informalities in the drawings.

?  6.47 Examiner's Amendment Involving Drawing Changes

The following changes to the drawings have been approved by the 
examiner and agreed upon by applicant:   [1].  In order to avoid abandon-
ment of the application, applicant must make these agreed upon drawing 
changes.

Examiner Note:

1.	In bracket 1, insert the agreed upon drawing changes.

2.	Form paragraphs 6.39 and 6.40 **>should follow, as appropriate<.

DRAWING SYMBOLS

37 CFR 1.84(n) indicates that graphic drawing symbols 
and other labeled representations may be used for conven-
tional elements where appropriate, subject to approval by 
the Office.  Also, suitable legends may be used, or may be 
required, in proper cases. >For examples of suitable sym-
bols and legends, see the "Guide for the Preparation of 
Patent Drawings" available from the Superintendent of 
Documents (see MPEP  Introduction).<

The publications listed below have been reviewed by the 
Office and the symbols therein are considered to be gener-
ally acceptable in patent drawings. Although the Office will 
not "approve" all of the listed symbols as a group because 
their use and clarity must be decided on a case-by-case 
basis, these publications may be used as guides when 
selecting graphic symbols. Overly specific symbols should 
be avoided.  Symbols with unclear meanings should be 
labeled for clarification.

These publications are available from the American 
National Standards Institute Inc., 11 West 42nd Street, New 
York, New York 10036.

The publications reviewed are the following:

Y32.2-1970 Graphic Symbols for Electrical & Electron-
ics Diagrams

Y32.10-1967 (R1994) Graphic Symbols for Fluid Power 
Diagrams

Y32.11-1961 (R1993) Graphic for Process Flow Dia-
grams in the Petroleum & Chemical Industries

Y32.14-1962  Graphic Symbols for Logic Diagrams

Z32.2.3-1949 (R1994) Graphical Symbols for Pipe Fit-
tings, Valves and Piping

Z32.2.4-1949 (R1953) Graphic Symbols for Heating, 
Ventilating & Air Conditioning

Z32.2.6-1950 (R1993) Graphic Symbols for Heat-Power 
Apparatus

The following symbols should be used to indicate vari-
ous materials where the material is an important feature of 
the invention.  The use of conventional features is very 
helpful in making prior art searches.  

>

<

See  MPEP ? 601.01(f) for treatment of applications 
filed without drawings and  MPEP ? 601.01(g) for treat-
ment of applications filed without all figures of drawings.

ILLUSTRATION SUBSEQUENTLY REQUIRED

The acceptance of an application without a drawing does 
not preclude the examiner from requiring an illustration in 
the form of a drawing under  37 CFR 1.81(c) or  37 CFR 
1.83(c).  In requiring such a drawing, the examiner should 
clearly indicate that the requirement is made under  37 CFR 
1.81(c) or  37 CFR 1.83(c) and be careful not to state that 
he or she is doing so "because it is necessary for the under-
standing of the invention," as that might give rise to an 
erroneous impression as to the completeness of the applica-
tion as filed. Examiners making such requirements are to 
specifically require, as a part of the applicant's next reply, 
at least an ink sketch or permanent print of any drawing 
proposed in reply to the requirement, even though no 
allowable subject matter is yet indicated. This will afford 
the examiner an early opportunity to determine the suffi-
ciency of the illustration and the absence of new matter.  
See  37 CFR 1.121 and  37 CFR 1.81(d). The description 
should of course be amended to contain reference to the 
new illustration. This may obviate further correspondence 
where an amendment places the case in condition for 
allowance, except for the formal requirement relating to the 
drawing.  In the event of a final determination that there is 
nothing patentable in the case, a formal drawing will not be 
required.

BLACK AND WHITE PHOTOGRAPHS

37 CFR 1.84.  Standards for drawings.

*****

(b)	Photographs.

(1)	Black and white.  Photographs are not ordinarily permitted in 
utility patent applications.  However, the Office will accept photographs in 
utility patent applications only after the granting of a petition filed under 
this paragraph which requests that photographs be accepted. Any such 
petition must include the following:

(i)	The fee set forth in ? 1.17(i); and

(ii)	Three (3) sets of photographs. Photographs must either 
be developed on double weight photographic paper or be permanently 
mounted on bristol board. The photographs must be of sufficient quality so 
that all details in the drawings are reproducible in the printed patent.

*****

Photographs ** or photomicrographs (not photolitho-
graphs or other reproductions of photographs made by 
using screens) printed on sensitized paper >are accceptable 
as final drawings,< in lieu of India ink drawings, to illus-
trate inventions which are incapable of being accurately or 
adequately depicted by India ink drawings, e.g., crystalline 
structures, metallurgical microstructures, textile fabrics, 
grain structures and ornamental effects. The photographs or 
photomicrographs must show the invention more clearly 
than they can be done by India ink drawings and otherwise 
comply with the rules concerning such drawings.

>Photographs submitted in lieu of ink drawings must 
comply with 37 CFR  1.84(b). However, the requirement of 
37 CFR  1.84(b)(1) for a petition, petition fee, and three 
sets of black and white photographs has been waived. For 
black and white photographs, there is no requirement for a 
petition or petition fee, and only one set of photographs is 
required. See 1213 O.G. 108 (Aug. 4, 1998) and 1211 O.G. 
34 (June 9, 1998).<

Such photographs to be acceptable must be made on 
photographic paper having the following characteristics 
which are generally recognized in the photographic trade: 
double weight paper with a surface described as smooth; 
tint, white, or be photographs mounted on proper size bris-
tol board.

See  MPEP ? 1503.02 for discussion of photographs 
used in design patent applications.

COLOR DRAWINGS OR COLOR PHOTOGRAPHS

37 CFR 1.84.  Standards for drawings.

(a)	Drawings. There are two acceptable categories for presenting 
drawings in utility patent applications:

*****

(2)	Color. On rare occasions, color drawings may be necessary as 
the only practical medium by which to disclose the subject matter sought 
to be patented in a utility patent application or the subject matter of a stat-
utory invention registration. The Patent and Trademark Office will accept 
color drawings in utility patent applications and statutory invention regis-
trations only after granting a petition filed under this paragraph explaining 
why the color drawings are  necessary. Any such petition must include the 
following:

(i)	The fee set forth in ? 1.17(i);

(ii)	Three (3) sets of color drawings; and

(iii)	The specification must contain the following language as 
the first paragraph in that portion of the specification relating to the brief 
description of the drawing:

The file of this patent contains at least one drawing executed in 
color. Copies of this patent with color drawing(s) will be provided 
by the Patent and Trademark Office upon request and payment of 
the necessary fee.

If the language is not in the specification, a proposed amend-
ment to insert the language must accompany the petition.

(b)	Photographs. 

*****

(2)	Color. Color photographs will be accepted in utility patent 
applications if the conditions for accepting color drawings have been satis-
fied. See paragraph (a)(2) of this section. 

*****

Limited use of color drawings in utility patent applica-
tions is provided for in 37 CFR 1.84(a)(2) and (b)(2). 
Unless a petition is filed and granted, the Draftsperson will 
not approve color drawings or color photographs in a utility 
or design patent application. The examiner must object to 
the color drawings or color photographs as being improper 
and require applicant either to cancel the drawings or to 
provide substitute black and white drawings.

Under  37 CFR 1.84(a)(2) and (b)(2), the applicant must 
file a petition with fee requesting acceptance of the color 
drawings or color photographs. The petition is decided by a 
Supervisory Patent Examiner. See  MPEP ? 1002.02(d). 

Where color drawings or color photographs are filed in a 
continuing application, applicant must renew the petition 
under  37 CFR 1.84(a)(2) and (b)(2) even though a similar 
petition was filed in the prior application. Until the renewed 
petition is granted, the examiner must object to the color 
drawings or color photographs as being improper.

In light of the substantial administrative and economic 
burden associated with printing a utility patent with color 
drawings or color photographs, the patent copies which are 
printed at issuance of the patent will depict the drawings in 
black and white only.  However, a set of color drawings or 
color photographs will be attached to the Letters Patent. 
Moreover, copies of the patent with color drawings or color 
photographs attached thereto will be provided by the Patent 
and Trademark Office upon special request and payment of 
the fee necessary to recover the actual costs associated 
therewith.

Accordingly, the petition must also be accompanied by a 
proposed amendment to insert the following language as 
the first paragraph in the portion of the specification con-
taining a brief description of the drawings:

The file of this patent contains at least one drawing executed in 
color.  Copies of this patent with color drawing(s) will be pro-
vided by the Patent and Trademark Office upon request and pay-
ment of the necessary fee.

It is anticipated that such a petition will be granted only 
when the Patent and Trademark Office has determined that 
a color drawing or color photograph is the only practical 
medium by which to disclose in a printed utility patent the 
subject matter to be patented.

It is emphasized that a decision to grant the petition 
should not be regarded as an indication that color drawings 
or color photographs are necessary to comply with a statu-
tory requirement. In this latter respect, clearly it is desirable 
to file any desired color drawings or color photographs as 
part of the original application papers in order to avoid 
issues concerning statutory defects (e.g., lack of enable-
ment under 35 U.S.C. 112 or new matter under 35 U.S.C. 
132). The filing of the petition, however, may be deferred 
until acceptable formal drawings are required by the exam-
iner.

NOTIFYING APPLICANT

If the original drawings are informal but may be admit-
ted for examination purposes, the Draftsperson indicates on 
a 2-part form, PTO-948, what the informalities are and that 
new corrected drawings are required. In either case, the 
informal drawings are accepted as satisfying the require-
ments of  37 CFR 1.51.

The examiners are directed to advise the applicants by 
way of form PTO-948 (see  MPEP ? 707.07(a)) in the first 
Office action of the conditions which the Draftsperson con-
siders to render the drawing informal.

Drawing corrections should be made when the applica-
tion is in condition for allowance unless the examiner 
requires correction at an earlier date.

If the examiner discovers a defect in the content of the 
drawing, the applicant should be notified by using a Form 
Paragraph, where appropriate.

?  6.21 New Drawings, Competent Draftsperson

New formal drawings are required in this application because [1].  
Applicant is advised to employ the services of a competent patent 
draftsperson outside the Office, as the Patent and Trademark Office no 
longer prepares new drawings.

?  6.22 Drawings Objected To

The drawings are objected to because [1].  Correction is required.

Examiner Note:

Follow with paragraph 6.27, if appropriate.

?  6.22.01 Drawings Objected To, Details Not Shown

The drawings are objected to under  37 CFR 1.83(a) because they fail 
to show [1] as described in the specification.  Any structural detail that is 
essential for a proper understanding of the disclosed invention should be 
shown in the drawing. MPEP ? 608.02(d).  Correction is required.

Examiner Note:

1.	In bracket 1, identify the structural details not shown in the draw-
ings.

2.	Follow with form paragraph 6.27, if appropriate.

?  6.22.02 Drawings Objected to, Different Numbers Refer to 
Same Part

The drawings are objected to as failing to comply with  37 CFR 
1.84(p)(4) because reference characters "  [1]" and "  [2]" have both been 
used to designate [3].  Correction is required.

Examiner Note:

1.	In brackets 1 and 2, identify the numbers which refer to the same 
part.

2.	In bracket 3, identify the part which is referred to by different num-
bers.

3.	Follow with form paragraph 6.27, if appropriate.

?  6.22.03 Drawings Objected to, Different Parts Referred to by 
Same Number

The drawings are objected to as failing to comply with  37 CFR 
1.84(p)(4) because reference character "  [1]" has been used to designate 
both [2] and [3].  Correction is required.

Examiner Note:

1.	In bracket 1, identify the number which refers to the different parts.

2.	In brackets 2 and 3, identify the parts which are referred to by the 
same number.

3.	Follow with form paragraph 6.27, if appropriate.

?  6.22.04 Drawings Objected to, Incomplete

The drawings are objected to under  37 CFR 1.83(b) because they are 
incomplete. 37 CFR 1.83(b) reads as follows: 

When the invention consists of an improvement on an old machine 
the drawing must when possible exhibit, in one or more views, the 
improved portion itself, disconnected from the old structure, and 
also in another view, so much only of the old structure as will suf-
fice to show the connection of the invention therewith.

Correction is required.

Examiner Note:

1.	Supply a full explanation, if it is not readily apparent how the draw-
ings are incomplete.

2.	Follow with form paragraph 6.27, if appropriate.

?  6.22.05 Drawings Objected to, Modifications in Same Figure

The drawings are objected to under 37 CFR 1.84(h)(5) because Figure  
[1] show(s) modified forms of construction in the same view. Correction is 
required.

Examiner Note:

1.	In *>bracket< 1, insert the appropriate Figure number(s).

2.	Follow with form paragraph 6.27, if appropriate.

?  6.22.06 Drawings Objected to, Reference Numbers Not in 
Drawings

The drawings are objected to as failing to comply with 37 CFR 
1.84(p)(5) because they do not include the following reference sign(s) 
mentioned in the description: [1].  Correction is required.

Examiner Note:

1.	In bracket 1, specify the reference characters which are not found in 
the drawings, including the page and line number where they first occur in 
the specification.

2.	Follow with form paragraph 6.27, if appropriate.

?  6.22.07 Drawings Objected to, Reference Numbers Not in 
Specification

The drawings are objected to as failing to comply with 37 CFR 
1.84(p)(5) because they include the following reference sign(s) not men-
tioned in the description: [1].  Correction is required.

Examiner Note:

1.	In bracket 1, specify the reference characters which are not found in 
the specification, including the figure in which they occur.

2.	Follow with form paragraph 6.27, if appropriate.

?  6.23 Subject Matter Admits of Illustration

The subject matter of this application admits of illustration by a draw-
ing to facilitate understanding of the invention. Applicant is required to 
furnish a drawing under 37 CFR 1.81.  No new matter may be introduced 
in the required drawing. 

Examiner Note:

When requiring drawings before examination use form paragraph 
6.23.01 with a PTOL-90 or PTO-90C form as a cover sheet.

?  6.23.01 Subject Matter Admits of Illustration (No Examination 
of Claims)

The subject matter of this application admits of illustration by a draw-
ing to facilitate understanding of the invention. Applicant is required to 
furnish a drawing under  37 CFR 1.81.  No new matter may be introduced 
in the required drawing.

Applicant is given a TWO MONTH time period to submit a drawing in 
compliance with  37 CFR 1.81.  Extensions of time may be obtained under 
the provisions of  37 CFR 1.136(a). Failure to timely submit a drawing 
will result in ABANDONMENT of the application.

Examiner Note:

1.	Use of this form paragraph should be extremely rare and limited to 
those instances where no examination can be performed due to lack of an 
illustration of the invention resulting in a lack of understanding of the 
claimed subject matter.

2.	Use a PTOL-90 or PTO-90C form as a cover sheet for this communi-
cation.

?  6.24 Informal Drawings

This application has been filed with informal drawings which are 
acceptable for examination purposes only. Formal drawings will be 
required when the application is allowed.

?  6.24.01 >Color< Photographs and Color Drawings, Petition 
Required

**>Color photographs< and color drawings are acceptable only for 
examination purposes unless a petition filed under 37 CFR 1.84(a)(2) or 
*>(b)(2)< is granted permitting their use as formal drawings.  In the event 
applicant wishes to use the drawings currently on file as formal drawings, 
a petition must be filed for acceptance of the >color< photographs or color 
drawings as formal drawings.  Any such petition must be accompanied by 
the appropriate fee as set forth in  37 CFR 1.17(i), three sets of >color< 
drawings or >color< photographs, as appropriate, and ** an amendment to 
the first paragraph of the brief description of the drawings section of the 
specification which states:

The file of this patent contains at least one drawing executed in color. 
Copies of this patent with color drawing(s) will be provided by the Patent 
and Trademark Office upon request and payment of the necessary fee.

Color photographs will be accepted if the conditions for accepting 
color drawings have been satisfied.

Examiner Note:>

1.	<This form paragraph should be used after form paragraph 6.24 only 
if the application contains >color< photographs or color drawings as the 
drawings required by  37 CFR 1.81.

>

2.	Do not use this form paragraph for black and white photographs. The 
requirement of 37 CFR 1.84(b)(1) for a petition, petition fee, and three 
sets of black and white photographs has been waived. For black and white 
photographs, there is no requirement for a petition or petition fee, and only 
one set of photographs is required. See 1213 O.G. 108 (Aug. 4, 1998) and 
1211 O.G. 34 (June 9, 1999).<

?  6.25.01 Formal Drawings Suggested, Allowable Subject Matter 
Indicated

Since allowable subject matter has been indicated, applicant is encour-
aged to submit formal drawings in response to this Office action. The early 
submission of formal drawings will permit the Office to review the draw-
ings for acceptability and to resolve any informalities remaining therein 
before the application is passed to issue. This will avoid possible delays in 
the issue process.

?  6.26 Informal Drawings Do Not Permit Examination

The informal drawings are not of sufficient quality to permit examina-
tion. Accordingly, new drawings are required in reply to this Office action.

Applicant is given a TWO MONTH time period to submit new draw-
ings in compliance with 37 CFR 1.81. Extensions of time may be obtained 
under the provisions of 37 CFR 1.136(a). Failure to timely submit new 
drawings will result in ABANDONMENT of the application.

Examiner Note:

1.	Use of this form paragraph should be extremely rare and limited to 
those instances where no examination can be performed due to the poor 
quality of the drawings resulting in a lack of understanding of the claimed 
subject matter.

2.	Use a PTOL-90 or PTO-90C form as a cover sheet for this communi-
cation.

?  6.27 Correction Held in Abeyance

Applicant is required to submit a proposed drawing correction in reply 
to this Office action. However, formal correction of the noted defect can 
be deferred until the application is allowed by the examiner.

DRAWING REQUIREMENTS

The first sentence of 35 U.S.C. 113 requires a drawing to 
be submitted upon filing where such drawing is necessary 
for the understanding of the invention. In this situation, the 
lack of a drawing renders the application incomplete and, 
as such, the application cannot be given a filing date until 
the drawing is received. The second sentence of  35 U.S.C. 
113 deals with the situation wherein a drawing is not neces-
sary for the understanding of the invention, but the case 
admits of illustration and no drawing was submitted on fil-
ing. The lack of the drawing in this situation does not ren-
der the application incomplete but rather is treated much in 
the same manner as an informality. The examiner should 
require such drawings in almost all such instances. Such 
drawings could be required during the processing of the 
application but do not have to be furnished at the time the 
application is filed. The applicant is allowed at least 
2 months from the date of the letter requiring drawings to 
submit them.

Handling of Drawing Requirements Under the First 
Sentence of 35 U.S.C. 113

The Office of Initial Patent Examination (OIPE) will 
make the initial decision in all new applications as to 
whether a drawing is "necessary" under the first sentence 
of  35 U.S.C. 113.  A drawing will be considered necessary 
under the first sentence of  35 U.S.C. 113 in all cases where 
the drawing is referred to in the specification and one or 
more  figures have been omitted.

The determination under  35 U.S.C. 113 (first sentence) 
as to when a drawing is necessary will be handled in OIPE 
according to the following procedure. OIPE will make the 
initial determination whether or not drawings are required 
for the understanding of the subject matter of the invention. 
**  When >no drawings are included in the application as 
filed and< drawings are required, the application is treated 
as incomplete and the applicant is so informed by OIPE. 
The filing date will not be granted and applicant will be 
notified to complete the application (37 CFR 1.53(e)). **   
If a drawing is later furnished, a filing date may be granted 
as of the date of receipt of such drawing.

 >An OIPE formality examiner should not treat an appli-
cation without drawings as incomplete if drawings are not 
required. A drawing is not required for a filing date under 
35 U.S.C. 111 and 113 if the application contains:

(1)	at least one process claim including the term "pro-
cess" or "method" in its introductory phrase;

(2)	at least one composition claim including the term 
"composition," "compound," "mixture" or "pharmaceuti-
cal" in its introductory phrase;

(3)	at least one claim directed to a coated article or 
product or to an article or product made from a particular 
material or composition (i.e., an article of known and con-
ventional character (e.g., a table), coated with or made of a 
particular composition (e.g., a specified polymer such as 
polyvinyl-chloride);

(4)	at least one claim directed to a laminated article or 
product (i.e., a laminated article of known and conventional 
character (e.g., a table)); or

(5)	at least one claim directed to an article, apparatus, 
or system where the sole distinguishing feature is the pres-
ence of a particular material e.g., a hydraulic system using a 
particular hydraulic fluid, or a conventional packaged 
suture using a particular material). 

For a more complete explanation about when a drawing 
is required, see MPEP ? 601.01(f). For applications submit-
ted without all of the drawings described in the specifica-
tion, see MPEP ?  601.01(g).<

If an examiner feels that a filing date should not have 
been granted in an application because it does not contain 
drawings, the matter should be brought to the attention of 
the supervisory patent examiner (SPE) for review. If the 
SPE decides that drawings are required to understand the 
subject matter of the invention, the SPE should return the 
application to OIPE with a typed, signed, and dated memo-
randum requesting cancellation of the filing date and iden-
tifying the subject matter required to be illustrated.

608.02(a)	New Drawing - When 
Required [R-1]

Utility and design patent applications should be taken up 
for the first Office action without a request for formal 
drawings unless the informal drawings are so unclear that 
they do not facilitate an understanding of the invention as 
to permit examination of the application. If at the time of 
the initial assignment of an application to an examiner's 
docket, or if at the time the application is taken up for 
action, the supervisory patent examiner believes the infor-
mal drawings to be of such a condition as to not permit rea-
sonable examination of the application, applicant should be 
required to immediately submit formal drawings. However, 
if the informal drawings do * permit >reasonable< exami-
nation and the supervisory patent examiner believes the 
drawings are of such a character as to render the application 
defective under  35 U.S.C. 112, examination should begin 
immediately with a requirement for formal drawings and a 
rejection of the claims as not being in compliance with  
35 U.S.C. 112, first paragraph, being made.

Formal drawings should be required when the applica-
tion is allowed.

Forms PTOL-326 and PTOL-37 now provide items for 
requiring formal drawings.

Form Paragraph 6.45 may also be used to inform appli-
cant that formal drawings are required.

?  6.45 Application Allowed, Formal Drawings Needed

Formal drawings are now required and must be filed within the 
THREE MONTH shortened statutory period set for reply in the "Notice of 
Allowability" (PTOL-37 or PTO-37).  Extensions of time may be obtained 
under the provisions of  37 CFR 1.136(a).  Failure to timely submit the 
drawings will result in ABANDONMENT of the application.  The draw-
ings should be submitted as a separate paper with a transmittal letter which 
is addressed to the Official Draftsperson.  The art unit number, application 
number and number of drawing sheets should be written on the reverse 
side of the drawings.

HANDLING OF DRAWING REQUIREMENTS 
UNDER THE SECOND SENTENCE OF 35 U.S.C. 113

35 U.S.C. 113 deals with the situation wherein the draw-
ing is not necessary for the understanding of the invention, 
but the subject matter admits of illustration by a drawing 
and the applicant has not furnished a drawing. The lack of 
the drawing in this situation does not render the application 
incomplete but rather is treated as an informality. A filing 
date will be accorded with the original presentation of the 
papers, despite the absence of drawings. In these situations, 
a drawing or further illustration will normally be required 
by the examiner. This *>may< be done >in the first Office 
action or< prior to examination in a separate letter. The 
examiner should require additional drawings, where appro-
priate, as early as possible since the possession of the addi-
tional drawings would facilitate the examination process. A 
>separate< letter requiring drawings may contain wording 
similar to the following:

The examiner has decided that the subject matter of this appli-
cation admits of illustration by a drawing and that a drawing 
would facilitate the understanding of the subject *>matter< dis-
closed. (Continue with a specific mention of those items of which 
drawings are desired.) Applicant is required to furnish a drawing 
under  37 CFR 1.81 (Incorporate in Office action or send a sepa-
rate letter setting a 2-month period for reply.)

The applicant should be given at least 2 months from the 
date of a requirement to submit drawings made in a sepa-
rate letter. If the requirement for drawings is included in an 
Office action, the time for supplying the additional draw-
ings will be the same as the time for reply to the Office 
action.

RECEIPT OF DRAWING AFTER THE FILING 
DATE

If new matter is noticed by the examiner in a substitute 
or additional drawing, the drawing should not be entered. It 
should be objected to as containing new matter. A new 
drawing without such new matter may be required if the 
examiner feels a drawing is needed under  37 CFR 1.81 or  
37 CFR 1.83. The examiner's decision would be reviewable 
by petition to the Commissioner under  37 CFR 1.181. The 
decision on such a petition would be handled by the Group 
Director.

UNTIMELY FILED DRAWINGS

If a drawing is not timely received in reply to a letter 
from the examiner who requires a drawing, the application 
becomes abandoned for failure to reply.

For the handling of additional, duplicate, or substitute 
drawings, see  MPEP ? 608.02(h).

608.02(b)	Informal Drawings  

37 CFR 1.85.  Corrections to drawings.

(a)	The requirements of ? 1.84 relating to drawings will be strictly 
enforced. A drawing not executed in conformity thereto, if suitable for 
reproduction, may be admitted for examination but in such case a new 
drawing must be furnished.

(b)	The Patent and Trademark Office will not release drawings in 
applications having a filing date after January 1, 1989, or any drawings 
from any applications after January 1, 1991, for purposes of correction. If 
corrections are necessary, new corrected drawings must be submitted 
within the time set by the Office.

(c)	When corrected drawings are required to be submitted at the 
time of allowance, the applicant is required to submit acceptable drawings 
within three months from the mailing of the "Notice of Allowability." 
Within that three-month period, two weeks should be allowed for review 
of the drawings by the Drafting Branch. If the Office finds that correction 
is necessary, the applicant must submit a new corrected drawing to the 
Office within the original three-month period to avoid the necessity of 
obtaining an extension of time and paying the extension fee.  Therefore, 
the applicant should file corrected drawings as soon as possible following 
the receipt of the Notice of Allowability. The provisions with respect to 
obtaining an extension of time relates only to the late filing of corrected 
drawings. The time limit for payment of the issue fee is a fixed three-
month period which cannot be extended as set forth in  35 U.S.C. 151.

In instances where the drawing is such that the prosecu-
tion can be carried on without the corrections, applicant is 
informed of the reasons why the drawing is objected to on 
Form PTO-948 or in an examiner's action, and that the 
drawing is admitted for examination purposes only (see  
MPEP ? 707.07(a)). To be fully responsive, an amendment 
must include a request for drawing corrections when the 
application is allowed or an appeal is filed. See  37 CFR 
1.111(b).

INFORMAL DRAWINGS

To expedite filing, applicants sometimes submit applica-
tions with informal drawings. Such applications are 
accepted by the Office of Initial Patent Examination 
(OIPE) for filing only, provided the informal drawings are 
readable and reproducible. Applicant is notified on Form 
PTO-948 or in an Office action that formal drawings, in 
compliance with 37 CFR 1.84 will be required when the 
application is allowed. Form Paragraph 6.24 may be used 
for this purpose.

?  6.24 Informal Drawings

This application has been filed with informal drawings which are 
acceptable for examination purposes only.  Formal drawings will be 
required when the application is allowed.

Alternatively, the examiner may check the appropriate 
box on the Office Action Summary, PTOL-326.

HANDLING OF NEW DRAWINGS

In those situations where an application is filed with 
informal drawings, applicants are requested to wait until 
they receive their "Notice of Draftsperson's Patent Drawing 
Review" form, PTO-948, or the first Office action utilizing 
form PTOL-326 or PTOL-37 from the group art unit before 
submitting the formal drawings. The letter of transmittal 
accompanying the formal drawings should identify the 
group art unit indicated on form PTO-948 or form PTOL-
326. If the informal notification appears on form PTOL-37, 
the date of the mailing of the Notice of Allowance and 
Issue Fee as well as the Issue Batch Number must be given. 
Also, each sheet of the drawing should include the applica-
tion number and group art unit in the upper right margin. In 
the past, some drawings have been misdirected because the 
group art unit indicated on the filing receipt was used rather 
than that indicated on the informal notice forms.

The Draftsperson is the judge of drawings, as to the exe-
cution of the same, and the arrangement of the views 
thereon, while the examiner is the judge as to the suffi-
ciency of the showing.  The drawings received with an 
application are inspected by the draftsperson. If the draw-
ing is satisfactory, he or she stamps on each sheet 
"Approved by Draftsman" and checks the approved box on 
Form PTO-948. See also  MPEP ? 608.02.

RECEIPT OF SUBSTITUTE DRAWINGS

If substitute drawings are timely filed, the examining 
group technical support staff should immediately send the 
new substitute drawings with the file wrapper to the 
Draftsperson for approval as to form.

If the application is allowed on the first action, the exam-
iner should require formal drawings using form PTOL-37.

COMPARISON OF SUBSTITUTE DRAWINGS

In utility applications, the examination will normally be 
conducted using any informal drawings presented.  The 
sufficiency of disclosure, as concerns the subject matter 
claimed, will be made by the examiner utilizing the infor-
mal drawings. IT IS APPLICANT'S RESPONSIBILITY 
TO SEE THAT NO NEW MATTER IS ADDED when sub-
mitting substitute drawings since they will not normally be 
reviewed by an examiner. Of course, if the examiner 
notices new matter in the substitute drawings, appropriate 
action to have the new matter deleted should be undertaken.

608.02(c)	Drawing Print Kept in File 
Wrapper  [R-1]

The drawing prints must always be kept on top of the 
papers on the right side of the file wrapper so as to be visi-
ble upon opening the wrapper and to permit them to be eas-
ily detached.

Applications may be sent to issue or to the Files Reposi-
tory without the original drawing, if any, if the drawing 
cannot be located. For an application sent to issue with 
missing drawings, see MPEP ? 608.02(z). For abandoned 
applications sent to the Files Repository, a notation should 
be made on the Contents portion of the file wrapper that the 
drawings were missing.

Upon initial processing, the original drawings are placed 
in the center portion of the application file wrapper *>on 
top of< the application papers by the *>Scanning< Divi-
sion. The formal drawings should be retained in this posi-
tion >for review by the Draftsperson<.

608.02(d)	Complete Illustration in Drawings 

37 CFR 1.83.  Content of drawing.

(a)	The drawing in a nonprovisional application must show every 
feature of the invention specified in the claims.  However, conventional 
features disclosed in the description and claims, where their detailed illus-
tration is not essential for a proper understanding of the invention, should 
be illustrated in the drawing in the form of a graphical drawing symbol or 
a labeled representation (e.g., a labeled rectangular box).

(b)	When the invention consists of an improvement on an old 
machine the drawing must when possible exhibit, in one or more views, 
the improved portion itself, disconnected from the old structure, and also 
in another view, so much only of the old structure as will suffice to show 
the connection of the invention therewith.

(c)	Where the drawings in a nonprovisional application do not com-
ply with the requirements of paragraphs (a) and (b) of this section, the 
examiner shall require such additional illustration within a time period of 
not less than two months from the date of the sending of a notice thereof. 
Such corrections are subject to the requirements of ? 1.81(d).

Any structural detail that is of sufficient importance to 
be described should be shown in the drawing. (Ex parte 
Good, 1911 C.D. 43, 164 O.G. 739 (Comm'r Pat. 1911).)

Form Paragraph 6.36 should be used to require illustra-
tion.

?  6.36 Drawings Do Not Show Claimed Subject Matter

The drawings are objected to under  37 CFR 1.83(a).  The drawings 
must show every feature of the invention specified in the claims.  There-
fore, the   [1] must be shown or the feature(s) canceled from the claim(s).  
No new matter should be entered.

Examiner Note:

In bracket 1, insert the features that must be shown.

See also  MPEP ? 608.02(a).

608.02(e)	Examiner Determines 
Completeness of Drawings

The examiner should see to it that the figures are cor-
rectly described in the brief description of the several views 
of the drawing section of the specification, that the refer-
ence characters are properly applied, that no single refer-
ence character is used for two different parts or for a given 
part and a modification of such part, and that there are no 
superfluous illustrations.

608.02(f)	Modifications in Drawings

Modifications may not be shown in broken lines on fig-
ures which show in solid lines another form of the inven-
tion. Ex parte Badger, 1901 C.D. 195, 97 O.G. 1596 
(Comm'r Pat. 1901).

All modifications described must be illustrated, or the 
text canceled. (Ex parte Peck, 1901 C.D. 136, 96 O.G. 2409 
(Comm'r Pat. 1901).) This requirement does not apply to a 
mere reference to minor variations nor to well-known and 
conventional parts.

608.02(g)	Illustration of Prior Art

Figures showing the prior art are usually unnecessary 
and should be canceled. Ex parte Elliott, 1904 C.D. 103, 
109 O.G. 1337 (Comm'r Pat. 1904). However, where 
needed to understand applicant's invention, they may be 
retained if designated by a legend such as "Prior Art."  

If the prior art figure is not labeled, Form Paragraph 
6.36.01 may be used.

?  6.36.01 Illustration of "Prior Art"

Figure [1] should be designated by a legend such as --Prior Art-- 
because only that which is old is illustrated.  See  MPEP ? 608.02(g).

608.02(h)	Additional, Duplicate, or 
Substitute Drawings   [R-1]

When an amendment is filed stating that substitute or 
additional sheets of drawings are filed with the amendment 
and such drawings have not been transmitted to the exam-
ining group, the technical support staff in the examining 
group should **>attempt to locate the missing drawings<.  
In the next communication of the examiner, the applicant is 
notified if the drawings have been received and whether or 
not the substitute or additional drawings have been entered 
in the application. >If the substitute or additional drawings 
are not entered, the examiner should give the applicant a 
concise and complete explanation as to why the drawings 
were not entered.<

Additional and substitute drawings, together with the file 
wrapper, are routed through the **>Draftsperson< where 
any defects in execution will be noted. If there are none, 
they will be stamped, "Approved By Draftsman."  When 
such drawings are considered by the examiner, it should be 
kept in mind that the "Approved" stamp applies only to the 
size and quality of paper, lines rough and blurred, and other 
details of execution. **

The examiner should not overlook such factors as new 
matter, the necessity for the additional sheets and consis-
tency with other sheets. The technical support staff will 
routinely enter  all additional and substitute sheets on the 
file wrapper.  ** If the examiner decides that the sheets 
should not be entered, **>the examiner should provide the 
applicant with the complete, explicit reasoning for the 
denial of entry.< The entries made by the technical support 
staff will be marked "(N.E.)." >The additional or substitute 
drawing sheets should be entered by the technical support 
staff after approval by both the draftsperson and the exam-
iner.<

Form Paragraph 6.37 may be used to acknowledge cor-
rected or substituted drawings.

?  6.37 Acknowledgment of Corrected or Substitute Drawings

The corrected or substitute drawings were received on [1].  These 
drawings are [2].

Examiner Note:

1.	In bracket 2, insert either --acceptable-- or --not acceptable--.

2.	If not acceptable, an explanation must be provided.

3.	If not acceptable because of informalities noted on PTO-948, use 
form paragraph 6.43.

Alternatively, PTOL-326 Office Action Summary 
includes a block for acknowledgment of corrected or sub-
stitute drawings.

If an additional sheet of drawing is considered unneces-
sary and the original drawing requires alterations which are 
taken care of in the proffered additional sheet, the latter 
may be used in lieu of the usual sketch required in making 
the correction of the original drawing.

For return of drawing, see  MPEP ? 608.02(y).

608.02(i)	Transfer of Drawings From 
Prior Applications 

Transfer of drawings from a first pending application to 
another will be made only upon the granting of a petition 
filed under  37 CFR 1.182 which must set forth a hardship 
situation requiring such transfer of drawings.

608.02(m)	Drawing Prints   [R-1]

Preparation and distribution of drawing prints is dis-
cussed in  MPEP ? 508.

Prints are made of the drawings of an acceptable applica-
tion. These prints are ** kept on top of the papers on the 
right side of the file wrapper *>. See< MPEP ? 719.01(b).

All prints and inked sketches subsequently filed to be 
part of the record are endorsed with the **>application< 
number.

The print ** should not be >permanently< marked or in 
any way altered. The original drawing, of course, should 
not be  marked up by the examiner. Where, as in an electri-
cal wiring case, it is desirable to identify the various cir-
cuits by different colors, or in any more or less complex 
case, it is advantageous to apply legends, arrows, or other 
indicia, an additional print for such use should be made ** 
by the examiner and placed unofficially in the file.

Prints remain in the file at all times except as provided in  
MPEP ? 608.02(c).

INTERFERENCE PRINTS

A print is prepared of each drawing in all applications 
having a filing date. This interference print is in addition to 
the drawing print on white paper. **>The classification of 
the application should be placed on the interference print.  
All interference prints are then placed in the drawing cabi-
nets.<

If an application has several sheets of drawings, the 
interference prints should be stapled together at their bot-
tom edges before being filed. If the number of sheets of 
prints is too large to be stapled, a fastener should be placed 
through the holes at the top.

The time when the interference prints are removed from 
the drawing cabinets is determined by the Group Director.

The drawings filed by applicant remain in the file wrap-
per.

608.02(n)	Duplicate Prints in 
Patentability Report Cases

In patentability report cases having drawings, the exam-
iner to whom the case is assigned should normally obtain a 
duplicate set of the interference prints of the drawing for 
filing in the group to which the case is referred.

When a case that has had patentability report prosecution 
is passed for issue or becomes abandoned, notification of 
this fact is given by the group having jurisdiction of the 
case to each group that submitted a patentability report. The 
examiner of each such reporting group notes the date of 
allowance or abandonment on his or her duplicate set of 
prints.  At such time as these prints become of no value to 
the reporting group, they may be destroyed.

For patentability reports, see MPEP ? 705 to  
? 705.01(f).

608.02(o)	*>Notations< Entered on 
Drawing   [R-1]

**>Drawing sheets received by the Mail Center are 
endorsed with the application number in the left-hand mar-
gin.< If the drawings are filed in the examining group, the 
group date of receipt stamp should be applied to the back of 
the drawing near the top.

Approval by the **>Draftsperson< is indicated by a leg-
end associated with the "O.G. Fig. Cl. . . . Sub. . . ." stamp 
on the front of each sheet.

608.02(p)	Correction of Drawings  

37 CFR 1.121.  Manner of making amendments

	(a)  	Amendments in nonprovisional applications, other than 
reissue applications:  Amendments in nonprovisional applications, 
excluding reissue applications, are made by filing a paper, in compliance 
with ? 1.52, directing that specified amendments be made.

*****

(3)	Drawings.

(i)	Amendments to the original application drawings are not 
permitted. Any change to the application drawings must be by way of a 
substitute sheet of drawings for each sheet changed submitted in compli-
ance with ? 1.84.

(ii)	Where a change to the drawings is desired, a sketch in 
permanent ink showing proposed changes in red, to become part of the 
record, must be filed for approval by the examiner and should be in a sep-
arate paper.

*****

For corrections which are deferrable, see  MPEP 
? 608.02(b). For correction at allowance and issue, see  
MPEP ? 608.02(w) and  MPEP ? 1302.05.

A canceled figure may be reinstated. An amendment 
should be made to the specification adding the brief 
description of the view if a canceled figure is reinstated.

608.02(q)	Conditions Precedent to 
Amendment of Drawing  [R-1]

*>Prior to allowance no< alterations will be permitted 
unless required by an examiner's letter in each case or pro-
posed in writing by applicant or his or her attorney or 
agent. In either case, the alterations or corrections as indi-
cated in the sketches filed with the request of the applicant 
or his or her attorney or agent must be given written 
approval by the examiner before the drawing is corrected.

CORRECTION OF INFORMALITIES (DRAFTS- 
PERSON'S OBJECTIONS ON PTO-948) 

Form Paragraph 6.40 (reproduced in  MPEP ? 608.02), 
the back page of PTO-948, and the back page of PTOL-37, 
the "Notice of Allowability," provide detailed information 
on how to effect drawing changes.

In order to correct any informalities in the drawings, 
applicants   MUST comply with the requirements set forth 
below. Failure to do so will result in ABANDONMENT of 
the application.

File new drawings with the changes incorporated 
therein. Applicant may delay filing of the new drawings 
until the application is allowed by the examiner.  If delayed, 
the new drawings MUST be filed within the period set for 
reply in the "NOTICE OF ALLOWABILITY" (PTOL-37). 
The drawings should be filed as a separate paper with a 
transmittal letter addressed to the Official Draftsperson 
which indicates the following in the upper right-hand cor-
ner:

Date of the Notice of Allowability

Issue Batch Number

Application Number

CORRECTIONS OTHER THAN INFORMALITIES 
NOTED BY THE DRAFTSPERSON ON THE PTO-
948

All changes to the drawings, other than informalities 
noted by the Draftsperson, MUST be made in the same 
manner as above except that, normally, a sketch of the 
changes to be incorporated into the new drawings MUST be 
approved by the examiner before the application will be 
allowed. No changes will be permitted to be made, other 
than correction of informalities, unless the examiner has 
approved the proposed changes.

608.02(r)	Separate Letter to Draftsperson 

Any proposal by the applicant for amendment of the 
drawing to cure defects must be embodied in a separate let-
ter. Otherwise the case, unless in other respects ready for 
issue, cannot be corrected, and applicant must be so 
advised in the next action by the examiner.

For changes which may require sketches, see  MPEP 
? 608.02(v).

608.02(t)	Cancelation of Figures [R-1]

Cancelation of one or more figures which do not occupy 
entire sheets of the drawings is done by the technical sup-
port staff in the examining group who encloses a figure and 
its legend with a red ink line. No portion of the figure itself 
should be crossed by the red line.  The words "CANCEL 
per'' and the date of the amendment directing the cancela-
tion or the date that substitute sheets are filed should be 
written in red ink within the red line. Cancelation of an 
entire sheet of drawings is done by stamping the words 
"CANCEL per" **>on the back side of the drawing sheet<.  
Canceled drawing sheets should be placed >upside down< 
at the bottom of the papers on the right side of the file 
wrapper.

When the cancelation of some of the figures from one 
sheet of drawings has left the remaining figures with an 
inartistic arrangement, >the examiner should consult with< 
the Draftsperson ** as to whether the remaining figures 
should be transferred to other sheets already in the case or 
shown in additional drawings. Cancelation of a figure may 
necessitate renumbering of the remaining figures.

608.02(v)	Drawing Changes Which 
Require  Sketches

When changes are to be made in the drawing itself, other 
than mere changes in reference characters, designations of 
figures, or inking over lines pale and rough, a print or pen-
and-ink sketch must be filed showing such changes in red 
ink or with the changes otherwise highlighted. Ordinarily, 
broken lines may be changed to full without a sketch.

Sketches filed by an applicant and used for correction of 
the drawing will not be returned. All such sketches must be 
in ink or permanent prints.

608.02(w)	Drawing Changes Which May 
Be Made Without Applicant's 
Sketch  [R-1]

Where an application is ready for issue except for a 
slight defect in the drawing not involving change in struc-
ture, the examiner will prepare a letter >to the applicant< 
indicating the change to be made and note in pencil on the 
drawing the addition or alteration to be made. >The 
marked-up copy of the drawing should be attached to the 
letter to the applicant.<

The correction must be made at applicant's expense.

As a guide to the examiner, the following corrections are 
illustrative of those that may be made by penciling in the 
change on the drawing without a sketch:

(A)	Adding two or three reference characters or expo-
nents.

(B)	Changing one or two numerals or figure ordi-
nals.   Garrett v. Cox, 233 F.2d 343, 346, 110 USPQ 52, 
54 (CCPA 1956).

(C)	Removing superfluous matter.

(D)	Adding or reversing directional arrows.

(E)	Changing Roman Numerals to Arabic Numerals 
to agree with specification.

(F)	Adding section lines or brackets, where easily 
executed.

(G)	Changing lead lines.

(H)	Correcting misspelled legends.

608.02(x)	Disposition of Orders for 
Amendment of Drawing   [R-1]

Where the correction of the drawing is approved by the 
examiner, the application and drawing are forwarded to the 
Publishing Division along with the Notice of Allowance.

CORRECTION NOT APPROVED

Where the correction is not approved, for example, 
because the proposed changes are erroneous, or involve 
new matter or (although otherwise proper) do not include 
all necessary corrections, the case and request for correc-
tion of drawing are not approved. **>The examiner should 
explicitly and clearly set forth all the reasons for not 
approving the corrections to the drawings in the next com-
munication to the applicant.<

608.02(y)	Return of Drawing   [R-1]

If there is a formal drawing in the case, nonentered 
drawings (except those originally filed) that have been 
finally denied admission will be returned to the applicant 
only at applicant's request.

A request for return of nonentered drawings must be 
filed within a reasonable time; otherwise, the drawing may 
be disposed of at the discretion of the Commissioner.

When a drawing is to be returned, the file, the examiner's 
letter stating that the drawing is being returned, and the 
drawing are taken to the **>manager of the Publishing 
Division< where the letter will be stamped and the drawing 
returned. The letter is mailed by the **>Publishing Divi-
sion<.

Before drawings are returned, prints are made and put in 
the application file.

608.02(z)	Allowable Applications Needing 
Drawing Corrections or Formal 
Drawings  [R-1]

Allowable applications *>should< be turned in for 
counting and forwarding to the Publishing Division without 
the drawings having been corrected. When sending allowed 
applications to the Publishing Division which require draw-
ing corrections, * yellow tag form PTO-1364 >must be 
attached to the center of the file.  The yellow tag form PTO-
1364 does not need to be filled out by the examiner<.  The 
approved formal drawings requiring correction should be 
placed as the top papers in the center fold of the file wrap-
per. The drawing correction instructions >, for example a 
drawing sheet with corrections marked in pencil,< should 
be stapled to the right outside flap of the file wrapper over 
the area having the search information. Care should be 
taken to make certain that the corrections have been 
approved by the examiner. Such approval should be made 
by the examiner prior to counting the allowance of the 
application.

**

The yellow tag procedure should not normally be used in 
other situations where corrected drawings have been filed 
but have not been approved by the Draftsperson unless the 
examiner is quite sure that the Draftsperson will approve 
the new drawings or in the situation where the application 
was examined utilizing an informal drawing and the 
request for formal drawings was not made until the Notice 
of Allowability was mailed. The yellow tag procedure 
should not be used in design applications where the draw-
ings have not been approved by the Draftsperson because 
of shading problems which can arise. If the substitute draw-
ings are not approved by the Draftsperson, the application 
should be promptly taken up for action by the examiner.

APPLICATIONS HAVING LOST DRAWINGS

A yellow tag is to be attached to the file wrapper and a 
"Drawing Missing" memo **>should< be stapled to the 
face of the file wrapper. The Notice of Allowability is veri-
fied and printed using PALM, and the Notice is mailed to 
the applicant.

The application is then forwarded to Licensing and 
Review or the Publishing Division, as appropriate, using 
the PALM transaction code after the application has been 
revised for issue.

UTILITY PATENT APPLICATIONS RECEIVING 
FORMAL DRAWINGS AFTER THE NOTICE OF 
ALLOWABILITY

Where substitute drawings are received in utility patent 
applications examined with informal drawings and the 
Notice of Allowability was mailed prior to the receipt of 
the substitute drawings, the **>technical support staff 
should forward the substitute drawings to the Publishing 
Division<.  Submission to the examiner is not necessary 
unless an amendment accompanies the drawings which 
changes the specification, such as where the description of 
figures is added or canceled.

BORROWING FILES FROM **>PUBLISHING 
DIVISION<

Allowed files requiring drawing corrections are sent to 
** the Publishing Division. At times, examiners have 
a need to borrow these applications. When borrowing 
applications, examining corps personnel must submit a 
request to the Office of Patent Publications Customer Ser-
vice Center.

37 CFR 1.312 AMENDMENTS

In handling  37 CFR 1.312 amendments, the examining 
corps should process drawings canceled in the normal man-
ner. If there are corrections to the drawing, approval, if 
appropriate, is indicated by the examiner on form PTOL-
271 in conjunction with Form Paragraph 6.48; the para-
graph sets the appropriate period for effecting the approved 
drawing change.

?  6.48 Drawing Changes in 37 CFR 1.312 Amendment

Applicant is hereby given ONE MONTH from the >mailing< date of 
this letter or until the expiration of the period set in the "Notice of Allow-
ance" (PTOL-85) or "Notice of Allowability" (PTOL-37 or PTO-37), 
whichever is longer, to file corrected drawings.

Examiner Note:

Use with the  37 CFR 1.312 amendment notice where there is a draw-
ing correction proposal or request.

Formal drawings may be required in an allowed applica-
tion by using Form Paragraph 6.25 in an Office action or by 
checking the appropriate box on form letter PTOL-37.

?  6.25 Formal Drawings Required, Application Allowed

The application having been allowed, formal drawings are required in 
response to this Office action.

Examiner Note:

Use this form paragraph only with the Notice of Allowability/Exam-
iner's Amendment.

608.03	Models, Exhibits, Specimens

35 U.S.C. 114.  Models, specimens.

The Commissioner may require the applicant to furnish a model of 
convenient size to exhibit advantageously the several parts of his inven-
tion.

When the invention relates to a composition of matter, the Commis-
sioner may require the applicant to furnish specimens or ingredients for 
the purpose of inspection or experiment.

37 CFR 1.91.  Models or exhibits not generally admitted as part of 
application or patent.

(a)	A model or exhibit will not be admitted as part of the record of 
an application unless it:

(1)	Substantially conforms to the requirements of ? 1.52 or 
? 1.84;

(2)	Is specifically required by the Office; or

(3)	Is filed with a petition under this section including:

(i)	The petition fee as set forth in ? 1.17(i); and

(ii)	An explanation of why entry of the model or exhibit in 
the file record is necessary to demonstrate patentability.

(b)	Notwithstanding the provisions of paragraph (a) of this section, 
a model, working model, or other physical exhibit may be required by the 
Office if deemed necessary for any purpose in examination of the applica-
tion.

Models or exhibits are generally not admitted as part of 
an application or patent unless the requirements of  37 CFR 
1.91 are satisfied.

With the exception of cases involving perpetual motion, 
a model is not ordinarily required by the Office to demon-
strate the operativeness of a device. If operativeness of a 
device is questioned, the applicant must establish it to the 
satisfaction of the examiner, but he or she may choose his 
or her own way of so doing.

A physical exhibit, not to be part of the application, is 
generally not refused except when bulky or dangerous. 
Such exhibit, if left with the examiner, may be disposed of 
at the discretion of the Office.

37 CFR 1.93.  Specimens.

When the invention relates to a composition of matter, the  applicant 
may be required to furnish specimens of the composition, or of its ingredi-
ents or intermediates, for the purpose of inspection or experiment.

See  MPEP Chapter 2400 regarding treatment of bio-
technology deposits.

**

608.03(a)	Handling of Models, Exhibits, a
nd Specimens  

All models and exhibits received in the Patent and 
Trademark Office should be taken to the examining group 
assigned the related application for examination. The 
receipt of all models and exhibits which are to be entered 
into the application file record must be properly recorded 
on the "Contents" portion of the application file wrapper.

A label indicating the application number, filing date, 
and attorney's name and address should be attached to the 
model or exhibit so that it is clearly identified and easily 
returned after prosecution of the application is closed, if 
return is requested and the model or exhibit is deemed not 
necessary for the examination of the application.  See  
37 CFR 1.94.

If the model or exhibit cannot be conveniently stored 
within the application file wrapper, it should not be 
accepted.

Models and exhibits may be presented for demonstration 
purposes during an interview.  The models and exhibits 
should be taken away by applicant or his/her attorney or 
agent at the conclusion of the interview since models or 
exhibits are generally not permitted to be admitted as part 
of the application or patent unless the requirements of  
37 CFR 1.91 are satisfied.  See MPEP ? 713.08.  A full 
description of what was demonstrated or exhibited during 
the interview must be made of record.  See  37 CFR 1.133.  
Any model or exhibit that is left with the examiner at the 
conclusion of the interview, which is not made part of the 
application or patent, may be disposed of at the discretion 
of the Office.  

37 CFR 1.94.  Return of models, exhibits or specimens.

Models, exhibits, or specimens in applications which have be come 
abandoned, and also in other applications on conclusion of the prosecu-
tion, may be returned to the applicant upon demand and at his expense, 
unless it be deemed necessary that they be preserved in the Office. Such 
physical exhibits in contested cases may be returned to the parties at their 
expense. If not claimed within a reasonable time, they may be disposed of 
at the discretion of the Commissioner.

Upon request by applicant for the return of a model or 
exhibit, the model or exhibit will be returned to applicant at 
applicant's expense if (1) the examiner determines that it is 
not necessary to preserve the model or exhibit in the Office, 
and (2) the model or exhibit has not been earlier disposed 
of by the Office. A letter should be written to applicant by 
the examining group stating that the model or exhibit is 
being returned under separate cover, and the model or 
exhibit should be forwarded with a copy of the letter and an 
address label to the Mail Center for wrapping and return.

For disposition of exhibits which are part of the record, 
see  MPEP ? 715.07(d).

For plant specimens, see MPEP ? 1607 and 37 CFR 
1.166.

37 CFR 1.95.  Copies of exhibits.

Copies of models or other physical exhibits will not ordinarily be fur-
nished by the Office, and any model or exhibit in an application or patent 
shall not be taken from the Office except in the custody of an employee of 
the Office specially authorized by the Commissioner.

608.04	New Matter

37 CFR 1.121.  Manner of making amendments.

	(a)  	Amendments in nonprovisional applications, other than 
reissue applications: Amendments in nonprovisional applications, exclud-
ing reissue applications, are made by filing a paper, in compliance with ? 
1.52, directing that specified amendments be made.

*****

(6)	No amendment may introduce new matter into the dis-
closure of an application.

*****

In establishing a disclosure, applicant may rely not only 
on the specification and drawing as filed but also on the 
original claims if their content justifies it. See MPEP 
? 608.01(l).

While amendments to the specification and claims 
involving new matter are ordinarily entered, such matter is 
required to be canceled from the descriptive portion of the 
specification, and the claims affected are rejected under  
35 U.S.C. 112, first paragraph.

When new matter is introduced into the specification, 
the amendment should be objected to under 35 U.S.C. 132 
(35 U.S.C. 251 if a reissue application) and a requirement 
made to cancel the new matter. The subject matter which is 
considered to be new matter must be clearly identified by 
the examiner.  If the new matter has been entered into the 
claims or affects the scope of the claims, the claims 
affected should be rejected under  35 U.S.C. 112, first para-
graph, because the new matter is not described in the appli-
cation as originally filed.

A "new matter" amendment of the drawing is ordinarily 
not entered; neither is an additional or substitute sheet con-
taining "new matter" even though stamped APPROVED by 
the Draftsman and provisionally entered by the examining 
group technical support staff.  See  MPEP ? 608.02(h).

The examiner's holding of new matter may be petition-
able or appealable. See  MPEP ? 608.04(c).

For new matter in reissue application, see MPEP 
? 1411.02. For new matter in substitute specification, see  
MPEP ? 608.01(q).

Note: No amendment is permitted in a provisional appli-
cation after it receives a filing date.

608.04(a)	Matter Not in Original Specifica-
tion, Claims, or Drawings

Matter not in the original specification, claims, or draw-
ings is usually new matter. Depending on circumstances 
such as the adequacy of the original disclosure, the addition 
of inherent characteristics such as chemical or physical 
properties, a new structural formula or a new use may be 
new matter.  See Ex parte Vander Wal, 109 USPQ 119, 
1956 C.D. 11, 705 O.G. 5 (Bd. App. 1955) (physical prop-
erties), Ex parte Fox, 128 USPQ 157, 1960 C.D. 28, 761 
O.G. 906 (Bd. App. 1957) (new formula) and Ex parte 
Ayers, 108 USPQ 444 (Bd. App. 1955) (new use). For 
rejection of claim involving new matter, see MPEP 
? 706.03(o).

For completeness of disclosure, see  MPEP ? 608.01(p). 
For trademarks and tradenames, see  MPEP ? 608.01(v).

608.04(b)	New Matter by Preliminary 
Amendment  

An amendment is sometimes filed along with the filing 
of the application. Such amendment does not enjoy the sta-
tus as part of the original disclosure in an application filed 
under 37 CFR 1.53(b) accompanied by a signed oath or 
declaration unless it is referred to in the oath or declaration 
filed therewith. Once an oath or declaration is submitted in 
an application filed under 37 CFR 1.53(b) identifying the 
papers which the inventor(s) has "reviewed and under-
stands" as required by  37 CFR 1.63, the original disclosure 
of the application is defined and cannot be altered merely 
by filing of a subsequent oath or declaration referring to 
different papers.  Where a 37 CFR 1.53(b) application is 
filed without a signed oath or declaration and such applica-
tion is accompanied by an amendment, that amendment is 
considered a part of the original disclosure.  The subse-
quently filed oath or declaration must refer to both the 
application and the amendment.  See MPEP ? 714.09. If the 
original executed oath or declaration filed on the filing date 
of the application fails to refer to the preliminary amend-
ment which was included with the application papers on fil-
ing, the preliminary amendment will not be considered part 
of the original disclosure. Any request to treat the prelimi-
nary amendment as a part of the original disclosure is by 
way of petition under 37 CFR 1.182, requesting that the 
original oath or declaration be disregarded and that the 
application be treated as an application filed without an 
executed oath or declaration under 37 CFR 1.53(f). Any 
such petition must be timely filed and be accompanied by a 
newly executed oath or declaration (which identifies the 
application and refers to the preliminary amendment), the 
surcharge set forth in  37 CFR 1.16(e), and the $130.00 
petition fee.

An amendment which adds additional disclosure filed 
with a request for a continuation-in-part application filed 
prior to December 1, 1997 under former 37 CFR 1.62 is 
automatically considered a part of the original disclosure of 
the application by virtue of the rule. Therefore, the oath or 
declaration filed in such an application must identify the 
amendment adding additional disclosure as one of the 
papers which the inventor(s) has "reviewed and under-
stands'' in order to comply with 37 CFR 1.63. If the original 
oath or declaration submitted in a continuation-in-part 
application filed prior to December 1, 1997 under former  
37 CFR 1.62 does not contain a reference to the amend-
ment filed with the request for an application under former  
37 CFR 1.62, the examiner must require a supplemental 
oath or declaration referring to the amendment.

608.04(c)	Review of Examiner's Holding 
of New Matter

Where the new matter is confined to amendments to the 
specification, review of the examiner's requirement for can-
celation is by way of petition. But where the alleged new 
matter is introduced into or affects the claims, thus necessi-
tating their rejection on this ground, the question becomes 
an appealable one, and should not be considered on petition 
even though that new matter has been introduced into the 
specification also.  37 CFR 1.181 and  37 CFR 1.191 afford 
the explanation of this seemingly inconsistent practice as 
affecting new matter in the specification.

608.05	Deposit of Computer Program 
Listings

37 CFR 1.96.  Submission of computer program listings.

	(a)  	General. Descriptions of the operation and general content 
of computer program listings should appear in the description portion of 
the specification. A computer program listing for the purpose of this sec-
tion is defined as a printout that lists in appropriate sequence the instruc-
tions, routines, and other contents of a program for a computer. The 
program listing may be either in machine or machine-independent (object 
or source) language which will cause a computer to perform a desired pro-
cedure or task such as solve a problem, regulate the flow of work in a 
computer, or control or monitor events. Computer program listings may be 
submitted in patent applications as set forth in paragraphs (b) and (c) of 
this section.

(b)	Material which will be printed in the patent. If the computer 
program listing is contained on ten printout pages or less, it must be sub-
mitted either as drawings or as part of the specification.

(1)	Drawings. If the listing is submitted as drawings, it must be 
submitted in the manner and complying with the requirements for draw-
ings as provided in ? 1.84. At least one figure numeral is required on each 
sheet of drawing.

(2)	Specification. (i) If the listing is submitted as part of the 
specification, it must be submitted in accordance with the provisions of 
? 1.52, at the end of the description but before the claims.

(ii)	Any listing submitted as part of the specification must be 
direct printouts (i.e., not copies) from the computer`s printer with dark 
solid black letters not less than 0.21 cm. high, on white, unshaded and 
unlined paper, and the sheets should be submitted in a protective cover. 
Any amendments must be made by way of submission of a substitute 
sheet.

(c)	As an appendix which will not be printed. If a computer pro-
gram listing printout is eleven or more pages long, applicants must submit 
such listing in the form of microfiche, referred to in the specification (see 
? 1.77(a)(6)). Such microfiche filed with a patent application is to be 
referred to as a "microfiche appendix." The "microfiche appendix" will 
not be part of the printed patent. Reference in the application to the 
"microfiche appendix" must be made at the beginning of the specification 
at the location indicated in ? 1.77(a)(6).  Any amendments thereto must be 
made by way of revised microfiche.

(1)	Availability of appendix. Such computer program listings on 
microfiche will be available to the public for inspection, and microfiche 
copies thereof will be available for purchase with the file wrapper and 
contents, after a patent based on such application is granted or the applica-
tion is otherwise made publicly available.

(2)	Submission requirements. Except as modified or clarified in 
this paragraph (c)(2), computer-generated information submitted as a 
"microfiche appendix" to an application shall be in accordance with the 
standards set forth in 36 CFR Part 1230 (Micrographics).

(i)	Film submitted shall be a first generation (camera film) 
negative appearing microfiche (with emulsion on the back side of the film 
when viewed with the images right reading).

(ii)	Reduction ratio of microfiche submitted should be 24:1 
or a similar ratio where variation from said ratio is required in order to fit 
the documents into the image area of the microfiche format used.

(iii)	At least the left-most third (50 mm. x 12 mm.) of the 
header or title area of each microfiche submitted shall be clear or positive 
appearing so that the Patent and Trademark Office can apply an applica-
tion number and filing date thereto in an eye-readable form. The middle 
portion of the header shall be used by applicant to apply an eye-readable 
application identification such as the title and/or the first inventor's name. 
The attorney's docket number may be included. The final right-hand por-
tion of the microfiche shall contain sequence information for the micro-
fiche, such as 1 of 4, 2 of 4, etc.

(iv)	Additional requirements which apply specifically to 
microfiche of filmed paper copy:

(A)	The first frame of each microfiche submitted shall 
contain a test target.

(B)	The second frame of each microfiche submitted must 
contain a fully descriptive title and the inventor's name as filed.

(C)	The pages or lines appearing on the microfiche 
frames should be consecutively numbered.

(D)	Pagination of the microfiche frames shall be from left 
to right and from top to bottom.

(E)	At a reduction of 24:1, resolution of the original 
microfilm shall be at least 120 lines per mm. (5.0 target).

(F)	An index, when included, should appear in the last 
frame (lower right hand corner when data is right-reading) of each micro-
fiche.

(v)	Microfiche generated by Computer Output Microfilm.

(A)	The first frame of each microfiche submitted should 
contain a resolution test frame. 

(B)	The second frame of each microfiche submitted must 
contain a fully descriptive title and the inventor's name as filed.

(C)	The pages or lines appearing on the microfiche 
frames should be consecutively numbered.

(D)	It is preferred that pagination of the microfiche 
frames be from left to right and top to bottom but the alternative, i.e., from 
top to bottom and from left to right, is also acceptable.

(E)	An index, when included, should appear on the last 
frame (lower right hand corner when data is right reading) of each micro-
fiche.

Special procedures for presentation of computer pro-
gram listings in the form of microfiche in U.S. national 
patent applications are set forth in 37 CFR 1.96. Use of 
microfiche is desirable in view of the number of computer 
program listings being submitted as part of the disclosure in 
patent applications. Such listings are often several hundred 
pages in length. By filing and publishing such computer 
program listings on microfiche rather than on paper, sub-
stantial cost savings can result to the applicants, the public, 
and the Patent and Trademark Office.

BACKGROUND

A computer program listing, as used in these rules, 
means the printout that lists, in proper sequence, the 
instructions, routines, and other contents of a program for a 
computer. The listing may be either in machine or machine-
independent (object or source) programming language 
which will cause a computer to perform a desired task, such 
as solving a problem, regulating the flow of work in com-
puter, or controlling or monitoring events. The general 
description of the computer program listing will appear in 
the specification while the computer program listing may 
appear either directly or as a microfiche appendix to the 
specification and be incorporated into the specification by 
reference.

DISCUSSION OF THE BACKGROUND AND 
MAJOR ISSUES INVOLVED

The provisions of  37 CFR 1.52 and  37 CFR 1.84 for 
submitting specifications and drawings on paper have been 
found suitable for most patent applications. However, when 
lengthy computer program listings must be disclosed in a 
patent application in order to provide a complete disclo-
sure, use of paper copies can become burdensome.

The cost of printing long computer programs in patent 
documents is also very expensive to the Patent and Trade-
mark Office.

In the past, all disclosures forming part of a patent appli-
cation were presented on paper with the exception of 
microorganisms. Under 37 CFR 1.96, several different 
methods for submitting computer program listings, includ-
ing the use of microfiche, are set forth.

A computer program listing contained on ten printout 
pages or less must be submitted either as drawings (in com-
pliance with 37 CFR 1.84) or as part of the specification (in 
compliance with 37 CFR 1.52).  A computer program list-
ing contained on eleven printout pages or more must be 
submitted as microfiche (in compliance with 37 CFR 
1.96(c)).

Form Paragraphs 6.02.02 through 6.02.04 may be used 
to notify the applicant of this requirement.

?  6.02.02 Microfiche Appendix Requirement (Computer Program 
Listing in Specification)

The description portion of this application contains a computer pro-
gram listing consisting of more than ten (10) pages.  In accordance with  
37 CFR 1.96(c), a computer program listing printout of more than ten 
pages must be submitted as a "microfiche appendix" conforming to the 
standards set forth in  37 CFR 1.96(c)(2) and must be appropriately refer-
enced in the specification (see  37 CFR 1.77(a)(6)).  Accordingly, appli-
cant is required to cancel the computer program listing appearing in the 
specification on pages [1], file a "microfiche appendix" in compliance 
with  37 CFR 1.96(c) and insert an appropriate reference to the newly 
added "microfiche appendix" at the beginning of the specification. 

Examiner Note:

1.	This form paragraph must be used whenever an application filed on 
or after September 23, 1996 contains a computer program listing consist-
ing of more than ten pages as part of the descriptive portion of the specifi-
cation.

2.	In bracket 1, insert the range of page numbers of the specification 
which include the computer program listing.

?  6.02.03 Computer Program Listing as Printout in Appendix 
(Not More Than Ten Pages)

This application contains an appendix consisting of a computer pro-
gram listing of no more than ten (10) pages.  In accordance with  37 CFR 
1.96(b), a computer program listing contained on ten (10) pages or less, 
must be submitted either as drawings or as part of the specification.  
Accordingly, applicant is required to cancel the appendix and either incor-
porate such listing in a drawing in compliance with  37 CFR 1.84 (identi-
fying each page as a separate figure), or insert the computer program 
listing in the descriptive portion of the specification. If the listing is sub-
mitted as part of the specification, it must appear after the detailed descrip-
tion of the invention but before the claims and must be in the form of 
direct printouts from a computer's printer with dark solid black letters not 
less than 0.21 cm. high, on white, unshaded and unlined paper.  The sheets 
should be submitted in a protective cover.  See  37 CFR 1.96(b)(2).

Examiner Note:

This form paragraph must be used whenever an application filed on or 
after September 23, 1996 contains a computer program listing consisting 
of a paper printout appendix of no more than ten pages.

?  6.02.04 Computer Program Listing as Printout in Appendix 
(More Than Ten Pages)

This application contains an appendix consisting of a computer pro-
gram listing of more than ten (10) pages.  In accordance with 37 CFR 
1.96(c), a computer program listing contained on more than ten (10) 
pages, must be submitted as a "microfiche appendix" conforming to the 
standards set forth in  37 CFR 1.96(c)(2) and must be appropriately refer-
enced in the specification (see  37 CFR 1.77(a)(6)).  Accordingly, appli-
cant is required to cancel the computer program listing appearing in the 
current appendix to the specification, file a "microfiche appendix" in com-
pliance with  37 CFR 1.96(c), and insert an appropriate reference to the 
newly added "microfiche appendix" at the beginning of the specification. 

Examiner Note:

This form paragraph must be used whenever an application filed on or 
after September 23, 1996 contains a computer program listing consisting 
of a paper printout appendix of more than ten pages.

Copies of publicly available computer program listings 
are available from the Patent and Trademark Office on 
paper and on microfiche at the cost set forth in  37 CFR 
1.19(a).

OTHER INFORMATION

The micrographic standards are set forth in 36 CFR Part 
1230.

A microfiche filed with a patent application will be 
referred to as a "Microfiche Appendix," and will be identi-
fied as such on the front page of the patent but will not be 
part of the printed patent. "Microfiche Appendix" denotes 
the total microfiche, whether only one or two or more. One 
microfiche is equivalent to a maximum of either 63 (9x7) 
or 98 (14x7) frames (pages), or less.

The face of the file wrapper will bear a label to denote 
that a Microfiche Appendix is included in the application. 
A statement must be included in the specification to the 
effect that a microfiche appendix is included in the applica-
tion. The specification entry must appear at the beginning 
of the specification immediately following any cross-refer-
ence to related applications.  37 CFR 1.77 (a)(6).  The 
patent front page and the Official Gazette entry will both 
contain information as to the number of microfiche and 
frames of computer program listings appearing in the 
microfiche appendix.

When an application containing microfiche is received 
in the Office of Initial Patent Examination (OIPE), a special 
envelope will be affixed to the right side of the file wrapper 
underneath all papers, and the microfiche inserted therein. 
The application file will then proceed on its normal course.  
A label which sticks up above the file wrapper will be 
placed at the center section of the face of the wrapper by 
OIPE. When the application file reaches the Micrographics 
Division, the Microfiche Appendix label will be placed on 
the face of the file wrapper. When the Publishing Division 
of the Office of Patent Publication receives the application 
file, the person placing the patent number on the face of the 
file, upon seeing the Microfiche Appendix label, will give 
the file to the Supervisor who will call Micrographics Divi-
sion and give the application number and patent number, 
and request copies of the microfiche. Micrographics Divi-
sion personnel will then put the patent number on the 
microfiche(s), making certain each microfiche is the most 
recent, and numbering each correctly, e.g., 1 of 1, 1 of 2, 
etc.  Upon completion, two copies will be produced and 
provided to Publishing Division - one for the grant head 
and one for the file wrapper.

At the time of assembly, the Microfiche Appendix will 
be placed inside the grant head behind the patent grant for 
eyeletting, ribboning, and mailing to the patentee/attorney. 
During the signing of the grant heads by the Attesting 
Officer, the patent will be checked to assure proper assem-
bly prior to mailing.

609	Information Disclosure Statement    
[R-1]

37 CFR 1.97.  Filing of information disclosure statement.

(a)	In order for an applicant for a patent or for a reissue of a patent 
to have an information disclosure statement in compliance with ? 1.98  
considered by the Office during the pendency of the application, it must 
satisfy paragraph (b), (c), or (d) of this section.

(b)	An information disclosure statement shall be considered by the 
Office if filed by the applicant:

(1)	Within three months of the filing date of a national applica-
tion;

(2)	Within three months of the date of entry of the national stage 
as set forth in ? 1.491 in an international application; or

(3)	Before the mailing date of a first Office action on the merits, 

whichever event occurs last.

(c)	An information disclosure statement shall be considered by the 
Office if filed by the applicant after the period specified in paragraph (b) 
of this section, provided that the information disclosure statement is filed 
before the mailing date of either a final action under ? 1.113, or a notice of 
allowance under ? 1.311, whichever occurs first, and is accompanied by 
either:

(1)	A statement as specified in paragraph (e) of this section; or

(2)	The fee set forth in ? 1.17(p).

(d)	An information disclosure statement shall be considered by the 
Office if filed by the applicant after the period specified in paragraph (c) 
of this section, provided that the information disclosure statement is filed 
on or before payment of the issue fee and is accompanied by:

(1)	A statement as specified in paragraph (e) of this section;

(2)	A petition requesting consideration of the information dis-
closure statement; and

(3)	The petition fee set forth in ? 1.17(i).

(e)	A statement under this section must state either:

(1)	That each item of information contained in the information 
disclosure statement was cited in a communication from a foreign patent 
office in a counterpart foreign application not more than three months 
prior to the filing of the information disclosure statement; or

(2)	That no item of information contained in the information dis-
closure statement was cited in a communication from a foreign patent 
office in a counterpart foreign application, and, to the knowledge of the 
person signing the statement after making reasonable inquiry, no item of 
information contained in the information disclosure statement was known 
to any individual designated in ? 1.56(c) more than three months prior to 
the filing of the information disclosure statement.

(f)	No extensions of time for filing an information disclosure state-
ment are permitted under ? 1.136. If a bona fide attempt is made to comply 
with ?1.98, but part of the required content is inadvertently omitted, addi-
tional time may be given to enable full compliance.

(g)	An information disclosure statement filed in accordance with 
this section shall not be construed as a representation that a search has 
been made.

(h)	The filing of an information disclosure statement shall not be 
construed to be an admission that the information cited in the statement is, 
or is considered to be, material to patentability as defined in ? 1.56(b).

(i)	Information disclosure statements, filed before the grant of a 
patent, which do not comply with this section and ? 1.98 will be placed in 
the file, but will not be considered by the Office.

37 CFR 1.98.  Content of information disclosure statement.

(a)	Any information disclosure statement filed under ? 1.97 shall 
include:

(1)	A list of all patents, publications or other information sub-
mitted for consideration by the Office;

(2)	A legible copy of :

(i)	Each U.S. and foreign patent;

(ii)	Each publication or that portion which caused it to be 
listed; and

(iii)	All other information or that portion which caused it to 
be listed, except that no copy of a U.S. patent application need be 
included; and

(3)	A concise explanation of the relevance, as it is presently 
understood by the individual designated in ? 1.56(c) most knowledgeable 
about the content of the information, of each patent, publication, or other 
information listed that is not in the English language. The concise expla-
nation may be either separate from the specification or incorporated 
therein.

(b)	Each U.S. patent listed in an information disclosure statement 
shall be identified by patentee, patent number and issue date. Each foreign 
patent or published foreign patent application shall be identified by the 
country or patent office which issued the patent or published the applica-
tion, an appropriate document number, and the publication date indicated 
on the patent or published application. Each publication shall be identified 
by author (if any), title, relevant pages of the publication, date and place of 
publication.

(c)	When the disclosures of two or more patents or publications 
listed in an information disclosure statement are substantively cumulative, 
a copy of one of the patents or publications may be submitted without cop-
ies of the other patents or publications provided that a statement is made 
that these other patents or publications are cumulative. If a written 
English-language translation of a non-English language document, or por-
tion thereof, is within the possession, custody or control of, or is readily 
available to any individual designated in ? 1.56(c), a copy of the transla-
tion shall accompany the statement.

(d)	A copy of any patent, publication or other information listed in 
an information disclosure statement is not required to be provided if it was 
previously cited by or submitted to the Office in a prior application, pro-
vided that the prior application is properly identified in the statement and 
relied upon for an earlier filing date under  35 U.S.C. 120. 

MINIMUM REQUIREMENTS FOR AN INFORMA-
TION DISCLOSURE STATEMENT

Information Disclosure Statements are not permitted in 
provisional applications filed under  35 U.S.C. 111(b).  
Since no substantive examination is given in provisional 
applications, a disclosure of information is unnecessary. 
Any such statement filed in a provisional application will 
be returned or destroyed at the option of the Office.  In 
applications filed under  35 U.S.C. 111(a), applicants and 
other individuals substantively involved with the prepara-
tion and/or prosecution of the application have a duty to 
submit to the Office information which is material to pat-
entability as defined in  37 CFR 1.56.  These individuals 
also may want the Office to consider information for a vari-
ety of other reasons; e.g., without first determining whether 
the information meets any particular standard of material-
ity, or because another patent office considered the infor-
mation to be relevant in a counterpart or related patent 
application filed in another country, or to make sure that the 
examiner has an opportunity to consider the same informa-
tion that was considered by the individuals that were sub-
stantively involved with the preparation or prosecution of a 
patent application.

An information disclosure statement filed in accordance 
with the provisions of 37 CFR 1.97 and  37 CFR 1.98 pro-
vides the procedure available to an applicant to submit 
information to the Office so that the information will be 
considered by the examiner assigned to the application. The 
requirements for the content of a statement have been sim-
plified in the rules which became effective on March 16, 
1992, to encourage individuals associated in a substantive 
way with the filing and prosecution of a patent application 
to submit information to the Office so the examiner can 
determine its relevance to the claimed invention. The pro-
cedures for submitting an information disclosure statement 
under the rules are designed to encourage individuals to 
submit information to the Office promptly.

In order to have information considered by the Office 
during the pendency of a patent application, an information 
disclosure statement in compliance with  37 CFR 1.98 as to 
content must be filed in accordance with the procedural 
requirements of  37 CFR 1.97. The requirements as to con-
tent are discussed in A below. The requirements based on 
the time of filing the statement are discussed in B below.  
Examiner handling of information disclosure statements is 
discussed in C below. 

The Office has set forth the minimum requirements for 
information to be considered in  37 CFR 1.97 and  37 CFR 
1.98. Once the minimum requirements are met, the exam-
iner has an obligation to consider the information. These 
rules provide certainty for the public by defining the 
requirements for submitting information to the Office so 
that the Office will consider information before a patent is 
granted. Information submitted to the Office that does not 
comply with the requirements of  37 CFR 1.97 and 37 CFR 
1.98 will not be considered by the Office but will be placed 
in the application file.  

The filing of an information disclosure statement shall 
not be construed as a representation that a search has been 
made.  37 CFR 1.97(g).  There is no requirement that an 
applicant for a patent make a patentability search. Further, 
the filing of an information disclosure statement shall not 
be construed to be an admission that the information cited 
in the statement is, or is considered to be, material to pat-
entability as defined in  37 CFR 1.56(b).  37 CFR 1.97(h).  
See  MPEP ? 2129 regarding admissions by applicant.

Multiple information disclosure statements may be filed 
in a single application, and they will be considered, pro-
vided each is in compliance with the appropriate require-
ments. Use of form PTO-1449, "Information Disclosure 
Citation," or PTO/SB/08A and 08B, "Information Disclo-
sure Statement," is encouraged as a means to provide the 
required list of information.  See C(2) below.

Information which has been considered by the Office in 
the parent application of a continued prosecution applica-
tion (CPA) filed under 37 CFR 1.53(d) or a file wrapper 
continuing application (FWC) filed prior to December 1, 
1997 under former 37 CFR 1.62 will be part of the file 
before the examiner and need not be resubmitted in the 
continuing application to have the information considered 
and listed on the patent.  Likewise, the examiner will con-
sider information which has been considered by the Office 
in a parent application when examining (A) a continuation 
application filed under  37 CFR 1.53(b) or filed under 
former  37 CFR 1.60, (B) a divisional application filed 
under  37 CFR 1.53(b) or filed under former  37 CFR 1.60, 
or (C) a continuation-in-part application (see  MPEP 
? 201.06(b)) filed under 37 CFR 1.53(b), and a list of the 
information need not be submitted in the continuation, divi-
sional, or continuation-in-part application unless applicant 
desires the information to be printed on the patent.

The examiner will consider the documents cited in the 
international search report in a PCT national stage applica-
tion when the Form PCT/DO/EO/903 indicates that both 
the international search report and the copies of the docu-
ments are present in the national stage file.  In such a case, 
the examiner should consider the documents from the inter-
national search report and indicate by a statement in the 
first Office action that the information has been considered. 
There is no requirement that the examiner list the docu-
ments on a PTO-892 form.

In a national stage application, the following form para-
graphs may be used where appropriate to notify applicant 
regarding references listed in the search report of the inter-
national application:

?  6.53 References Considered in 37 U.S.C. 371 Application 
Based Upon Search Report - Prior to Allowance

The references cited in the Search Report [1] have been considered, but 
will not be listed on any patent resulting from this application because 
they were not provided on a separate list in compliance with  37 CFR 
1.98(a)(1).  In order to have the references printed on such resulting 
patent, a separate listing, preferably on a PTO-1449 form, must be filed 
within the set period for reply to this Office action.

Examiner Note:

1.	This form paragraph may be used for PCT National Stage applica-
tions submitted under  35 USC 371 where the examiner has obtained cop-
ies of the cited references.  For applications filed from US, JPO or EPO 
search authorities, the copies of the references should be supplied by those 
offices under the trilateral agreement.  However, if receipt of such copies 
is not indicated on the PCT/DO/EO/903 form in the file, burden is on the 
applicant to supply copies for consideration.  See  MPEP ? 1893.03(g). 

2.	Instead of using this form paragraph, the examiner may list the refer-
ences on a PTO-892, thereby notifying the applicant that the references 
have been considered and will be printed on any patent resulting from this 
application.

3.	This form paragraph should only be used prior to allowance when a 
statutory period for reply is being set in the Office action.

4.	If the application is being allowed, form paragraph 6.54 should be 
used with the Notice of Allowance instead of this form paragraph.

?  6.54 References Considered in 37 U.S.C. 371 Application 
Based Upon Search Report - Ready for Allowance

The references cited in the Search Report [1] have been considered, but 
will not be listed on any patent resulting from this application because 
they were not provided on a separate list in compliance with 37 CFR 
1.98(a)(1).  In order to have the references printed on such resulting 
patent, a separate listing, preferably on a PTO-1449 form, must be filed 
within ONE MONTH of the mailing date of this communication.  NO 
EXTENSION OF TIME WILL BE GRANTED UNDER EITHER  
37 CFR 1.136(a) OR (b) to comply with this requirement.

Examiner Note:

1.	See the Examiner Note for form paragraph 6.53.

?  6.55 References Not Considered in 37 U.S.C. 371 Application 
Based Upon Search Report

The listing of references in the Search Report is not considered to be an 
information disclosure statement (IDS) complying with 37 CFR 1.98. 
37 CFR 1.98(a)(2) requires a legible copy of each U.S. and foreign patent, 
each publication or that portion which caused it to be listed.  In addition, 
each IDS must include a list of all patents, publications, or other informa-
tion submitted for consideration by the Office (see 37 CFR 1.98(a)(1) and 
(b)), and  MPEP ? 609 A(1) states, "the list ... must be submitted on a sep-
arate paper."  Therefore,  the references cited in the Search Report have 
not been considered. Applicant is advised that the date of submission of 
any item of information or any missing element(s) will be the date of sub-
mission for purposes of determining compliance with the requirements 
based on the time of filing the IDS, including all "statement requirements 
of  37 CFR 1.97(e).  See  MPEP ? 609 C(1).

Examiner Note:

1.	This form paragraph may be used in National Stage applications sub-
mitted under 35 U.S.C. 371 where the international searching authority 
was not the US, EPO or JPO.

A.	Content

An information disclosure statement must comply with 
the provisions of  37 CFR 1.98 as to content in order to be 
considered by the Office. Each information disclosure 
statement must comply with the applicable provisions of 
A(1), A(2), and A(3) below.

A (1)	List of All Patents, Publications, or Other 
Information

Each information disclosure statement must include a 
list of all patents, publications, or other information submit-
ted for consideration by the Office.

37 CFR 1.98(b) requires that each U.S. patent listed in 
an information disclosure statement be identified by paten-
tee, patent number, and issue date. Each foreign patent or 
published foreign patent application must be identified by 
the country or patent office which issued the patent or pub-
lished the application, an appropriate document number, 
and the publication date indicated on the patent or pub-
lished application. Each publication must be identified by 
author (if any), title, relevant pages of the publication, date 
and place of publication. The date of publication supplied 
must include at least the month and year of publication, 
except that the year of publication (without the month) will 
be accepted if the applicant points out in the information 
disclosure statement that the year of publication is suffi-
ciently earlier than the effective U.S. filing date and any 
foreign priority date so that the particular month of publica-
tion is not in issue. The place of publication refers to the 
name of the journal, magazine, or other publication in 
which the information being submitted was published.

To comply with this requirement, the list may not be 
incorporated into the specification but must be submitted in 
a separate paper. A separate list is required so that it is easy 
to confirm that applicant intends to submit an information 
disclosure statement and because it provides a readily 
available checklist for the examiner to indicate which iden-
tified documents have been considered. A copy of a sepa-
rate list will also provide a simple means of communication 
to applicant to indicate the listed documents that have been 
considered and those listed documents that have not been 
considered. Use of either form PTO-1449, Information Dis-
closure Citation, or PTO/SB/08A and 08B, Information 
Disclosure Statement, is encouraged.  See C(2) below. 

A (2)	Legible Copies

In addition to the list, each information disclosure state-
ment must also include a legible copy of:

(A)	Each U.S. and foreign patent;

(B)	Each publication or that portion which caused it to 
be listed; and

(C)	All other information or that portion which caused 
it to be listed, except that no copy of a U.S. patent applica-
tion need be included.

There are exceptions to this general rule that a copy must 
be provided. First,  37 CFR 1.98(d) states that a copy of any 
patent, publication, or other information listed in an infor-
mation disclosure statement is not required to be provided 
if it was previously cited by or submitted to the Office in a 
prior application, provided that the prior application is 
properly identified in the statement and relied on for an ear-
lier filing date under 35 U.S.C. 120. The examiner will con-
sider information cited or submitted to the Office and 
considered by the Office in a prior application relied on 
under  35 U.S.C. 120. This exception to the requirement for 
copies of information does not apply to information which 
was cited in an international application under the Patent 
Cooperation Treaty. If the information cited or submitted in 
the prior application was not in English, a concise explana-
tion of the relevance of the information to the new applica-
tion is not required unless the relevance of the information 
differs from its relevance as explained in the prior applica-
tion. See A(3) below.

Second,  37 CFR 1.98(c) states that when the disclosures 
of two or more patents or publications listed in an informa-
tion disclosure statement are substantively cumulative, a 
copy of one of the patents or publications may be submitted 
without copies of the other patents or publications provided 
that a statement is made that these other patents or publica-
tions are cumulative. The examiner will then consider only 
the patent or publication of which a copy is submitted and 
will so indicate on the list,  form PTO-1449, or PTO/SB/
08A and 08B, submitted, e.g., by crossing out the listing of 
the cumulative information. 

37 CFR 1.98(c) further states that if a written English  
language translation of a non-English language document, 
or portion thereof, is within the possession, custody or con-
trol  of, or is readily available to any individual designated 
in  37 CFR 1.56(c), a copy of the translation shall accom-
pany the statement. Translations are not required to be filed 
unless they have been reduced to writing and are actually 
translations of what is contained in the non-English lan-
guage information. If no translation is submitted, the exam-
iner will consider the information in view of the concise 
explanation and insofar as it is understood on its face, e.g., 
drawings, chemical formulas, English language abstracts, 
in the same manner that non-English language information 
in Office search files is considered by examiners in con-
ducting searches.

A (3)	Concise Explanation of Relevance

Each information disclosure statement must further 
include a concise explanation of the relevance, as it is pres-
ently understood by the individual designated in  37 CFR 
1.56(c) most knowledgeable about the content of the infor-
mation, of each patent, publication, or other information 
listed that is not in the English language. The concise 
explanation may be either separate from the specification 
or incorporated therein.

The requirement for a concise explanation of relevance 
is limited to information that is not in the English language. 
The explanation required is limited to the relevance as 
understood by the individual designated in  37 CFR 1.56(c) 
most knowledgeable about the content of the information at 
the time the information is submitted to the Office. If a 
translation of the information into English is submitted 
with the foreign language information, no concise explana-
tion is required. An English-language equivalent applica-
tion may be submitted to fulfill this requirement if it is, in 
fact, a translation of a for eign language application being 
listed in an information disclosure statement. There is no 
requirement for the translation to be verified. Submission 
of an English language abstract of a reference may fulfill 
the requirement for a concise explanation. Where the infor-
mation listed is not in the English language, but was cited 
in a search report or other action by a foreign patent office 
in a counterpart foreign application, the requirement for a 
concise explanation of relevance can be satisfied by sub-
mitting an English-language version of the search report or 
action which indicates the degree of relevance found by the 
foreign office. This may be an explanation of which portion 
of the reference is particularly relevant, to which claims it 
applies, or merely an "X", "Y", or "A" indication on a 
search report. The requirement for a concise explanation of 
non-English language information would not be satisfied 
by a statement that a reference was cited in the prosecution 
of a United States application which is not relied on under  
35 U.S.C. 120. 

If information cited or submitted in a prior application 
relied on under  35 U.S.C. 120 was not in English, a con-
cise explanation of the relevance of the information to the 
new application is not required unless the relevance of the 
information differs from its relevance as explained in the 
prior application. 

The concise explanation may indicate that a particular 
figure or paragraph of the patent or publication is relevant 
to the claimed invention. It might be a simple statement 
pointing to similarities between the item of information and 
the claimed invention. It is permissible but not necessary to 
discuss differences between the cited information and the 
claims.

Applicants may, if they wish, provide a concise explana-
tion of why English-language information is being submit-
ted and how it is understood to be relevant. Concise 
explanations are helpful to the Office, particularly where 
documents are lengthy and complex and applicant is aware 
of a section that is highly relevant to patentability or where 
a large number of documents are submitted and applicant is 
aware that one or more are highly relevant to patentability.

B.	Time for Filing

The procedure and requirements for submitting an infor-
mation disclosure statement are linked to four stages in the 
processing of a patent application: (1) within 3 months of 
filing, or before first Office action, whichever is later; (2) 
after the period in (1), but before final Office action or a 
Notice of Allowance, whichever is earlier; (3) after the 
period in (2) but on or before the date the issue fee is paid; 
and (4) after the period in (3) and up to the time the patent 
application can be effectively withdrawn from issue. The 
procedures and requirements apply to applications filed 
under  35 U.S.C. 111(a) (utility), 161 (plants), 171 
(designs), and 251 (reissue), as well as international appli-
cations entering the national stage under  35 U.S.C. 371. 

The requirements based on the time when the 
information disclosure statement is filed are summarized as 
follows.

Time when IDS is filed 
	37 CFR 1.97 
Requirements 

(1)	Within 3 months of fil-
ing or before first Office 
action on the merits, 
whichever is later.
	None (always 
considered).

(2)	After (1) but before 
final action or notice of 
allowance.
	1.97(e) state-
ment or 1.17(p) 
fee.

(3)	After final action or 
notice of 		allowance and 
before payment of issue.
	1.97(e) state-
ment, petition, 
and petition fee.

B (1)	Information Disclosure Statement Filed 
BEFORE First Action on the Merits or Within 
Three (3) Months of Actual Filing Date (37 CFR 
1.97(b))

An information disclosure statement will be considered 
by the examiner if filed:

(A)	within 3 months of the filing date of a national  
application;

(B)	within 3 months of the date of entry of the national 
stage as set forth in  37 CFR 1.491 in an international appli-
cation; or

(C)	before the mailing date of a first Office action on 
the merits,

whichever event occurs last. An information disclosure 
statement filed within this period requires neither a fee nor 
a statement under  37 CFR 1.97(e).

The term "national application" includes continuing 
applications (continuations, divisions, continuations-in-
part) so 3 months will be measured from the actual filing 
date of an application as opposed to the effective filing date 
of a continuing application.

All information disclosure statements that comply with 
the content requirements of  37 CFR 1.98 and are filed 
within 3 months of the filing date, including the filing date 
of a CPA, will be considered by the examiner, regardless of 
whatever else has occurred in the examination process up 
to that point in time. Thus, in the rare instance that a final 
Office action or a notice of allowance is prepared and 
mailed prior to a date which is 3 months from the filing 
date, any information contained in a complete information 
disclosure statement filed within that 3-month window will 
be considered by the examiner. Since the preexamination 
processing of a CPA is performed by the examining group 
rather than by the Office of Initial Patent Examination 
(OIPE), it should be expected that a first Office action 
will normally issue in a CPA (continuation) well within 
3 months from the filing date of the CPA request.  The sub-
mission of an information disclosure statement after the 
first Office action is mailed could delay prosecution.  
Therefore, applicants are encouraged to file any informa-
tion disclosure statement in a CPA (especially continuation) 
as early as possible, preferably at the time of filing of the 
CPA request or before the first Office action. 

Likewise, an information disclosure statement will be 
considered if it is filed later than 3 months after the filing 
date but before the mailing date of a first Office action on 
the merits.  An action on the merits means an action which 
treats the patentability of the claims in an application, as 
opposed to only formal or procedural requirements. An 
action on the merits would, for example, contain a rejection 
or indication of allowability of a claim or claims rather than 
just a restriction requirement (37 CFR 1.142) or just a 
requirement for additional fees to have a claim considered 
(37 CFR 1.16(d)).  Thus, if an application was filed on Jan-
uary 2 and the first Office action on the merits was not 
mailed until 6 months later on July 2, the examiner would 
be required to consider any proper information disclosure 
statement filed prior to July 2.

An information disclosure statement will be considered 
to have been filed on the day it was received in the Office, 
or on an earlier date of mailing if accompanied by a prop-
erly executed certificate of mailing or facsimile transmis-
sion under 37 CFR 1.8, or if it is in proper compliance with 
the provisions for "Express Mail" delivery under 37 CFR 
1.10.  An Office action is mailed on the date indicated in 
the Office action. 

B (2)	Information Disclosure Statement Filed After 
B(1), but BEFORE Mailing of Final Action or 
Notice of Allowance (37 CFR 1.97(c))

An information disclosure statement will be considered 
by the examiner if filed after the period specified in B(1) 
above, but before (not on the same day as) the mailing date 
of either:

a final action under  37 CFR 1.113, e.g., final rejection, 
** or 

a notice of allowance under  37 CFR 1.311,

whichever occurs first, provided * the information disclo-
sure statement is accompanied by either  >(1)< a statement 
as specified in  37 CFR 1.97(e); or (2) the fee set forth in  
37 CFR 1.17(p). If a final action or notice of allowance is 
mailed in an application and later withdrawn, the applica-
tion will be considered as not having had a final action or 
notice of allowance mailed for purposes of considering an 
information disclosure statement.

An Ex parte Quayle action is not a final action under  
37 CFR 1.113 as referred to in 37 CFR 1.97.  Therefore, an 
information disclosure statement filed after an Ex parte 
Quayle action, but before mailing of a notice of allowance, 
must comply with the provisions of  37 CFR 1.97(c) rather 
than those of  37 CFR 1.97(d). However, where an Ex parte 
Quayle action is issued after a final rejection which has not 
been withdrawn, any information disclosure statement filed 
after the Ex parte Quayle action must comply with the pro-
visions of  37 CFR 1.97(d). 

(A)	If information submitted during the period set 
forth in 37 CFR 1.97(c) with a statement under 37 CFR 
1.97(e) is used in a new ground of rejection on unamended 
claims, the next Office action will not be made final since 
in this situation it is clear that applicant has submitted the 
information to the Office promptly after it has become 
known and the information is being submitted prior to a 
final determination on patentability by the Office. The 
information submitted with a statement under 37 CFR 
1.97(e) can be used in a new ground of rejection and the 
next Office action made final, however, if the new ground 
of rejection was necessitated by amendment of the applica-
tion by applicant. Where the information is submitted dur-
ing this period with a fee, the examiner may use the 
information submitted, e.g., printed publication or evidence 
of public use, and make the next Office action final whether 
or not the claims have been amended, provided that no 
other new ground of rejection which was not necessitated 
by amendment to the claims is introduced by the examiner.  
See MPEP ? 706.07(a). If a new ground of rejection is 
introduced that is neither necessitated by an amendment to 
the claims nor based on the information submitted with the 
fee set forth in 37 CFR 1.17(p), the Office action shall not 
be made final.

(B)	A statement under 37 CFR 1.97(e) must state 
either

(1)	that each item of information contained in the 
information disclosure statement was cited in a communi-
cation from a foreign patent office in a counterpart foreign 
application not more than three months prior to the filing of 
the statement, or

(2)	that no item of information contained in the 
information disclosure statement was cited in a communi-
cation from a foreign patent office in a counterpart foreign 
application, and, to the knowledge of the person signing the 
statement after making reasonable inquiry, no item of infor-
mation contained in the information disclosure statement 
was known to any individual designated in 37 CFR 1.56(c) 
more than three months prior to the filing of the statement. 

A statement under 37 CFR 1.97(e) can contain either of 
two statements.  One statement is that each item of infor-
mation in an information disclosure statement was cited in 
a communication, such as a search report, from a patent 
office outside the U.S. in a counterpart foreign application 
not more than 3 months prior to the filing date of the state-
ment. Under this statement, it does not matter whether any 
individual with a duty of disclosure actually knew about 
any of the information cited before receiving the search 
report. The date on the communication by the foreign 
patent office begins the 3-month period in the same manner 
as the mailing of an Office action starts a 3-month short-
ened statutory period for reply. If the communication con-
tains two dates, the mailing date of the communication is 
the one which begins the 3-month period. The date which 
begins the 3-month period is not the date the communica-
tion was received by a foreign associate or the date it was 
received by a U.S. registered practitioner. Likewise,the 
statement will be considered to have been filed on the date 
the statement was received in the Office, or on an earlier 
date of mailing or transmission if accompanied by a prop-
erly executed certificate of mailing or facsimile transmis-
sion under  37 CFR 1.8, or if it is in compliance with the 
provisions for "Express Mail" delivery under  37 CFR 1.10.

The term counterpart foreign patent application means 
that a claim for priority has been made in either the U.S. 
application or a foreign application based on the other, or 
that the disclosures of the U.S. and foreign patent applica-
tions are substantively identical (e.g., an application filed in 
the European Patent Office claiming the same U.K. priority 
as claimed in the U.S. application).

Communications from foreign patent offices in foreign 
applications sometimes include a list of the family of pat-
ents corresponding to a particular patent being cited in the 
communication. The family of patents may include a 
United States patent or other patent in the English lan-
guage. Some applicants submit information disclosure 
statements to the PTO which list and include copies of both 
the particular patent cited in the foreign patent office com-
munication and the related United States or other English 
language patent from the family list. Since this is to 
be encouraged, the United States or other English 
language patent will be construed as being cited by the for-
eign patent office for purposes of a statement under 37 CFR 
1.97(e)(1). The examiner should consider the United States 
or other English language patent if 37 CFR 1.97 and 
37 CFR 1.98 are complied with.

If an information disclosure statement includes a copy of 
a dated communication from a foreign patent office which 
clearly shows that the statement is being submitted within 
3 months of the date on the communication, the copy will 
be accepted as the required communication. It will be 
assumed, in the absence of evidence to the contrary, that the 
communication was for a counterpart foreign application.

In the alternative, a statement can be made if no item of 
information contained in the information disclosure state-
ment was cited in a communication from a foreign patent 
office in a counterpart foreign application and, to the 
knowledge of the person signing the statement after making 
reasonable inquiry, neither was it known to any individual 
having a duty to disclose more than 3 months prior to the 
filing of the statement.

The phrase "after making reasonable inquiry" makes it 
clear that the individual making the statement has a duty to 
make reasonable inquiry regarding the facts that are being 
stated. The statement can be made by a registered practitio-
ner who represents a foreign client and who relies on state-
ments made by the foreign client as to the date the 
information first became known. A registered practitioner 
who receives information from a client without being 
informed whether the information was known for more 
than 3 months, however, cannot make the statement under  
37 CFR 1.97(e)(2) without making reasonable inquiry. For 
example, if an inventor gave a publication to the attorney 
prosecuting an application with the intent that it be cited to 
the Office, the attorney should inquire as to when that 
inventor became aware of the publication and should not 
submit a statement under  37 CFR 1.97(e)(2) to the Office 
until a satisfactory response is received. The statement can 
be based on present, good faith knowledge about when 
information became known without a search of files being 
made.

A statement under 37 CFR 1.97(e) need not be in the 
form of an oath or a declaration under 37 CFR 1.68. A 
statement under 37 CFR 1.97(e) by a registered practitioner 
or any other individual that the statement was filed within 
the 3-month period of either first citation by a foreign 
patent office or first discovery of the information will be 
accepted as dispositive of compliance with this provision in 
the absence of evidence to the contrary. For example, a 
statement under  37 CFR 1.97(e) could read as follows:

I hereby state that each item of information contained in this 
Information Disclosure Statement was cited in a communication 
from a foreign patent office in a counterpart foreign application 
not more than 3 months prior to the filing of this statement., 

or

I hereby state that no item of information in the Information 
Disclosure Statement filed herewith was cited in a communica-
tion from a foreign patent office in a counterpart foreign applica-
tion, and, to my knowledge after making reasonable inquiry, no 
item of information contained in this Information Disclosure 
Statement was known to any individual designated in 37 CFR 
1.56(c) more than 3 months prior to the filing of this Information 
Disclosure Statement.

An information disclosure statement may include two 
lists and two statements, similar to the above examples, in 
situations where some of the information listed was cited in 
a communication from a foreign patent office not more 
than 3 months prior to filing the statement and some was 
not, but was not known more than 3 months prior to filing 
the statement.

A copy of the foreign search report need not be submit-
ted with the statement under 37 CFR 1.97(e), but an indi-
vidual may wish to submit an English-language version of 
the search report to satisfy the requirement for a concise 
explanation where non-English language information is 
cited. The time at which information was known to any 
individual designated in 37 CFR 1.56(c) is the time when 
the information was discovered in association with the 
application even if awareness of the materiality came later. 
The Office wishes to encourage prompt evaluation of the 
relevance of information and to have a date certain for 
determining if a statement under 37 CFR 1.97(e) can prop-
erly be made. A statement on information and belief would 
not be sufficient. Examiners should not remind or other-
wise make any comment about an individual's duty of can-
dor and good faith, but questions about the adequacy of any 
statement received in writing by the Office should be 
directed to the Office of the Assistant Commissioner for 
Patents.

B(3)	Information Disclosure Statement Filed After 
B(2), but Prior to Payment of Issue Fee (37 CFR 
1.97(d))

An information disclosure statement will be considered 
by the examiner if filed on or after the mailing date of 
either a final action under 37 CFR 1.113 or a notice of 
allowance under  37 CFR 1.311, whichever occurs first, but 
before or simultaneous with payment of the issue fee, pro-
vided the statement is accompanied by:

(A)	a statement as specified in 37 CFR 1.97(e) (see the 
discussion in B(2) above);

(B)	a petition requesting consideration of the informa-
tion disclosure statement; and

(C)	the petition fee set forth in  37 CFR 1.17(i).

These requirements are appropriate in view of the late 
stage of prosecution when the information is being submit-
ted, i.e., after the examiner has reached a final determina-
tion on the patentability of the claims presented for 
examination. The petition should be directed to the Group 
Director of the examining group handling the application. 
The petition need do nothing more than request consider-
ation of the information being submitted. Payment of the 
petition fee (37 CFR 1.17(i)) and submission of the appro-
priate statement (37 CFR 1.97(e)) are the essential elements 
for having information considered at this advanced stage of 
prosecution, assuming the content requirements of  37 CFR 
1.98 are satisfied.

Form paragraph 6.52 may be used to inform the appli-
cant that the information disclosure statement is being con-
sidered.

?  6.52 Information Disclosure Statement, Petition Granted

The information disclosure statement (IDS) submitted on [1] was filed 
after the mailing date of the [2] on [3].  The submission is in compliance 
with the provisions of  37 CFR 1.97.  Accordingly, the petition is granted 
and the information disclosure statement is being considered by the exam-
iner.

Examiner Note:

1.	This form paragraph may be used in an Office action only when 
signed by a Supervisory Patent Examiner.

2.	In bracket 2, insert either --final Office action-- or --Notice of 
Allowance--, as appropriate.

The requirements of 37 CFR 1.97 provide for consider-
ation by the Office of information which is submitted 
within a reasonable time, i.e., within 3 months after an indi-
vidual designated in 37 CFR 1.56(c) becomes aware of the 
information or within 3 months of the information being 
cited in a communication from a foreign patent office in a 
counterpart foreign application. This undertaking by the 
Office to consider information would be available through-
out the pendency of the application until the point where 
the patent issue fee was paid. If an applicant chose not to 
comply, or could not comply, with the requirements of  
37 CFR 1.97(d), a continuing application could be filed to 
have the information considered by the examiner. The par-
ent application could be permitted to become abandoned by 
not paying the issue fee required in the Notice of Allow-
ance, for example, or by the filing of a continued prosecu-
tion application under 37 CFR 1.53(d). All information 
disclosure statements filed in the prior application that 
comply with the content requirements of 37 CFR 1.98 but 
have not been considered in the prior application will be 
considered by the examiner in a continued prosecution 
application filed under 37 CFR 1.53(d). No specific request 
that the previously submitted information disclosure state-
ment be considered in the continued prosecution applica-
tion is required.  However, for file wrapper continuing 
(FWC) applications filed prior to December 1, 1997 under 
former 37 CFR 1.62, in order to ensure consideration of 
information complying with the content requirements of  
37 CFR 1.98 previously submitted in a parent application 
which has not been considered in the parent application, 
applicant must either specifically request that the previ-
ously submitted information be considered in the FWC or 
resubmit the information complying with 37 CFR 1.97 and  
37 CFR 1.98 in the FWC.  For continuing applications filed 
under 37 CFR 1.53(b), in order to ensure consideration of 
information previously submitted in a parent application 
which has not  been considered in the parent application, 
applicant must resubmit the information complying with  
37 CFR 1.97 and  37 CFR 1.98 in the continuing applica-
tion. It would not be proper to make final a first Office 
action in the continuing application if the information sub-
mitted is used in a new ground of rejection.

B(4) 	Information Disclosure Statement Filed After 
Payment of Issue Fee

After the issue fee has been paid on an application, it is 
impractical for the Office to attempt to consider newly sub-
mitted information. Information disclosure statements filed 
after payment of the issue fee in an application will not be 
considered but will merely be placed in the application file.  
See C below. The application may be withdrawn from issue 
at this point, however, pursuant to  37 CFR 1.313(b)(5) 
so that the information can be considered in a contin-    
uing application. In this situation, a continued prosecution 
application >(CPA)< under 37 CFR 1.53(d) could be filed 
even though the issue fee had already been paid. 
>See MPEP ? 1308.  Applicants are encouraged to file the 
petition under 37 CFR 1.313(b)(5) with a CPA under 
37 CFR 1.53(d) by facsimile to the Office of Petitions (see 
MPEP ? 1730 for the facsimile number). The petition need 
not be accompanied by the information disclosure state-
ment if the size of the statement makes its submission by 
facsimile impracticable, but the petition should indicate 
that an information disclosure statement will be filed in the 
CPA if it does not accompany the petition under 37 CFR  
1.313(b)(5).<  

All information disclosure statements filed in the prior 
application that comply with the content requirements of  
37 CFR 1.98 but have not  been considered in the prior 
application will be considered by the examiner in a contin-
ued prosecution application filed under  37 CFR 1.53(d).  
No specific request that the previously submitted informa-
tion disclosure statement be considered in the continued 
prosecution application is required.  However, for file 
wrapper continuing (FWC) applications filed prior to 
December 1, 1997 under former 37 CFR 1.62, in order to 
ensure consideration of information complying with the 
content requirements of  37 CFR 1.98 previously submitted 
in a parent application which has not been considered in the 
parent application, applicant must either specifically 
request that the previously submitted information be con-
sidered in the FWC or resubmit the information complying 
with 37 CFR 1.97 and 37 CFR 1.98 in the FWC.  For con-
tinuing applications filed under 37 CFR 1.53(b), in order to 
ensure consideration of information previously submitted 
in a parent application which has not  been considered in 
the parent application, applicant must resubmit the infor-
mation complying with 37 CFR 1.97 and 37 CFR 1.98 in 
the continuing application.  Alternatively, for example, a 
petition pursuant to 37 CFR 1.313(b)(3) could be filed if 
applicant states that one or more claims are unpatentable. 
This statement that one or more claims are unpatentable 
over the information must be unequivocal.  A statement 
that a serious question as to patentability of a claim has 
been raised, for example, would not be acceptable to with-
draw an application from issue under 37 CFR 1.313(b)(3). 
Form paragraph 13.09 may be used.

?  13.09 Information Disclosure Statement, Issue Fee Paid

Applicant's information disclosure statement of   [1] was filed after the 
issue fee was paid.  Information disclosure statements filed after payment 
of the issue fee will not be considered, but will be placed in the file.  How-
ever, the application may be withdrawn from issue in order to file a con-
tinuing application under 37 CFR 1.53(b) or 1.53(d) upon the grant of a 
petition filed under the provisions of  37 CFR 1.313(b)(5).  Alternatively, 
the other provisions of  37 CFR 1.313 may apply, e.g., a petition to with-
draw the application from issue under the provisions of 37 CFR 
1.313(b)(3) may be filed together with an unequivocal statement by the 
applicant that one or more claims are unpatentable over the information 
contained in the statement. The information disclosure statement would 
then be considered upon withdrawal of the application from issue under  
37 CFR 1.313(b)(3).

Examiner Note:

1.	For information disclosure (Prior Art) statements submitted after the 
issue fee has been paid, use this paragraph with form PTOL-90 or PTO-
90C.

2.	In bracket 1, insert the filing date of the IDS.

If an application has been withdrawn from issue under 
one of the provisions of 37 CFR 1.313(b)(1)-(4), it will be 
treated as though no notice of allowance had been mailed 
and the issue fee had not yet been paid with regard to the 
time for filing information disclosure statements. Petitions 
under 37 CFR 1.313(b) should be directed to the Office of 
Petitions in the Office of the Deputy Assistant Commis-
sioner for Patent Policy and Projects. >See MPEP ? 1308.<

B(5)	Extensions of Time (37 CFR 1.97(f))

No extensions of time for filing an information disclo-
sure statement are permitted under  37 CFR 1.136(a) or (b). 
If a bona fide attempt is made to comply with the content 
requirements of  37 CFR 1.98, but part of the required con-
tent is inadvertently omitted, additional time may be given 
to enable full compliance.

C.	Examiner Handling of Information Disclosure 
Statements

Information disclosure statements will be reviewed for 
compliance with the requirements of  37 CFR 1.97 and  37 
CFR 1.98 as discussed in A and B above. Applicant will be 
notified of compliance and noncompliance with the rules as 
discussed below.

C(1)	Noncomplying  Statements

Pursuant to  37 CFR 1.97(i), submitted information, filed 
before the grant of a patent, which does not comply with  
37 CFR 1.97 and  37 CFR 1.98 will be placed in the file, 
but will not be considered by the Office. Information sub-
mitted after the grant of a patent must comply with  37 CFR 
1.501.

If an information disclosure statement does not comply 
with the requirements based on the time of filing the state-
ment as discussed in B above, including the requirements 
for fees and/or statement under  37 CFR 1.97(e), the state-
ment will be placed in the application file, but none of the 
information will be considered by the examiner. The exam-
iner may use Form Paragraph 6.49 which is reproduced 
below to inform applicant that the information has not been 
considered. Applicant may then file a new information dis-
closure statement or correct the deficiency in the previously 
filed statement, but the date that the new statement or cor-
rection is filed will be the date of the statement for purposes 
of determining compliance with the requirements based on 
the time of filing the statement (37 CFR 1.97).

The examiner should write "not considered" on an infor-
mation disclosure statement where none of the information 
listed complies with the requirements, e.g., no copies of 
listed items submitted.  If none of the information listed on 
a PTO-1449 or PTO/SB/08A and 08B form is considered, a 
diagonal line should also be drawn in pencil across the 
form and the form placed on the right side of the applica-
tion file to instruct the printer not to list the information on 
the face of the patent if the application goes to issue.  The 
paper containing the disclosure statement or list will be 
placed in the record in the application file. The examiner 
will inform applicant that the information has not been con-
sidered and the reasons why by using form paragraphs 6.49 
through 6.49.09. If the improper citation appears as part of 
another paper, e.g., an amendment, which may be properly 
entered and considered, the portion of the paper which is 
proper for consideration will be considered. 

?  6.49 Information Disclosure Statement Not Considered

The information disclosure statement filed   [1] fails to comply with the 
provisions of  37 CFR 1.97, 1.98 and  MPEP ?  609 because   [2].  It has 
been placed in the application file, but the information referred to therein 
has not been considered as to the merits.  Applicant is advised that the date 
of any resubmission of any item of information contained in this informa-
tion disclosure statement or the submission of any missing element(s) will 
be the date of submission for purposes of determining compliance with the 
requirements based on the time of filing the statement, including all 
requirements for statements under  37 CFR 1.97(e).  See  MPEP ? 609 
? C(1).

Examiner Note:

See  MPEP ? 609 for situations where the use of this form paragraph 
would be appropriate.

?  6.49.01 Information Disclosure Statement Not Considered, 
After First Action, Before Final or Allowance, No Statement

The information disclosure statement filed [1] fails to comply with  37 
CFR 1.97(c) because it lacks a statement as specified in  37 CFR 1.97(e).  
It has been placed in the application file, but the information referred to 
therein has not been considered.

?  6.49.02 Information Disclosure Statement Not Considered, 
After First Action, Before Final or Allowance, No Fee

The information disclosure statement filed [1] fails to comply with  37 
CFR 1.97(c) because it lacks the fee set forth in  37 CFR 1.17(p).  It has 
been placed in the application file, but the information referred to therein 
has not been considered.

?  6.49.03 Information Disclosure Statement Not Considered, 
After Final or Allowance, Issue Fee Not Paid No Statement

The information disclosure statement filed [1] fails to comply with 
37 CFR 1.97(d) because it lacks a statement as specified in  37 CFR 
1.97(e).  It has been placed in the application file, but the information 
referred to therein has not been considered.

?  6.49.04 Information Disclosure Statement Not Considered, 
After Final or Allowance, Issue Fee Not Paid No Petition 
Requesting Consideration

The information disclosure statement filed [1] fails to comply with  
37 CFR 1.97(d) because it lacks a petition requesting consideration of the 
information disclosure statement.  It has been placed in the application 
file, but the information referred to therein has not been considered.

?  6.49.05 Information Disclosure Statement Not Considered, 
After Final or Allowance, Issue Fee Not Paid No Petition Fee

The information disclosure statement filed [1] fails to comply with  
37 CFR 1.97(d) because it lacks the petition fee set forth in 37 CFR 
1.17(i).  It has been placed in the application file, but the information 
referred to therein has not been considered.

?  6.49.06 Information Disclosure Statement Not Considered, 
References Listed in Specification

The listing of references in the specification is not a proper information 
disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publica-
tions, or other information submitted for consideration by the Office, and  
MPEP ? 609 A(1) states, "the list may not be incorporated into the specifi-
cation but must be submitted in a separate paper."  Therefore, unless the 
references have been cited by the examiner on form PTO-892, they have 
not been considered.

?  6.49.07 Information Disclosure Statement Not Considered, No 
Copy of References

The information disclosure statement filed [1] fails to comply with 
37 CFR 1.98(a)(2), which requires a legible copy of each U.S. and foreign 
patent; each publication or that portion which caused it to be listed; and all 
other information or that portion which caused it to be listed. It has been 
placed in the application file, but the information referred to therein has 
not been considered.

?  6.49.08 Information Disclosure Statement Not Considered, No 
List of References

The information disclosure statement filed [1] fails to comply with 
37 CFR 1.98(a)(1), which requires a list of all patents, publications, or 
other information submitted for consideration by the Office. It has been 
placed in the application file, but the information referred to therein has 
not been considered.

?  6.49.09 Information Disclosure Statement Not Considered, No 
Explanation of Relevance

The information disclosure statement filed [1] fails to comply with  
37 CFR 1.98(a)(3) because it does not include a concise explanation of the 
relevance, as it is presently understood by the individual designated in  
37 CFR 1.56(c) most knowledgeable about the content of the information, 
of each patent listed that is not in the English language.  It has been placed 
in the application file, but the information referred to therein has not been 
considered.

If an information disclosure statement complies with the 
requirements based on the time of filing the statement as 
discussed in B above, including the requirements for fees 
and/or statement under  37 CFR 1.97(e), but part of the 
content requirements as discussed in A above has been 
inadvertently omitted, the examiner may set a 1-month time 
period to correct the omission. Form paragraph 6.51 may 
be used for this purpose.

?  6.51 Time for Completing Information Disclosure Statement

The information disclosure statement filed on [1] does not fully com-
ply with the requirements of  37 CFR 1.98 because:  [2].  Since the sub-
mission appears to be bona fide, applicant is given ONE (1) MONTH 
from the date of this notice to supply the above-mentioned omissions or 
corrections in the information disclosure statement.  NO EXTENSION OF 
THIS TIME LIMIT MAY BE GRANTED UNDER EITHER  37 CFR 
1.136(a) OR (b).  Failure to timely comply with this notice will result in 
the above-mentioned information disclosure statement being placed in the 
application file with the non-complying information not being considered.  
See  37 CFR 1.97(i).

Examiner Note:

This practice does not apply where there has been a deliberate omis-
sion of some necessary part of an Information Disclosure Statement or 
where the requirements based on the time of filing the statement, as set 
forth in  37 CFR 1.97, have not been complied with.

If a statement fails to comply with requirements as dis-
cussed in this section for an item of information, that item 
of information in the statement will not be considered and a 
line should be drawn through the citation to show that it has 
not been considered.  However, other items of information 
that do comply with all the requirements will be considered 
by the examiner.

If information is listed in the specification rather than in 
a separate paper, or if the other content requirements as dis-
cussed in A above are not complied with, the information 
need not be considered by the examiner, in which case the 
examiner should notify applicant in the next Office action 
that the information has not been considered. It should be 
noted, however, that no copy of a U.S. patent application is 
required to be submitted.  See A(2) above. Where a U.S. 
patent application is properly cited on a separate list, the 
examiner should obtain access to that file within the Office.

C (2)	Complying Statements

The information contained in information disclosure 
statements which comply with both the content require-
ments as discussed in A above and the requirements based 
on the time of filing the statement as discussed in B above 
will be considered by the examiner. 

Applicants, patent owners, reexamination requesters, 
protestors, and others are encouraged to use form PTO-
1449, "Information Disclosure Citation," or PTO/SB/08A 
and 08B "Information Disclosure Statement," when prepar-
ing an information disclosure statement.  A copy of each 
form is reproduced in this section to indicate how the form 
should be completed.  The form will enable persons to 
comply with the requirement to list each item of informa-
tion being submitted and to provide the Office with a uni-
form listing of citations and with a ready way to indicate 
that information has been considered. Examiners must con-
sider all citations submitted in conformance with the rules 
and this section, and their initials when placed adjacent to 
the considered citations on the list or in the boxes provided 
on a form PTO-1449 or PTO/SB/08A and 08B provides a 
clear record of which citations have been considered by the 
Office. The examiner must also fill in his or her name and 
the date the information was considered in blocks at the 
bottom of the PTO-1449 or PTO/SB/08A and 08B form. If 
the citations are submitted on a list other than on a form 
PTO-1449 or PTO/SB/08A and 08B, the examiner may 
write "all considered" and his or her initials to indicate that 
all citations have been considered. If any of the citations are 
considered, a copy of the submitted list, form PTO-1449, or 
PTO/SB/08A and 08B, as reviewed by the examiner, will 
be returned to the applicant with the next communication. 
Those citations not considered by the examiner will have a 
line drawn through the citation and any citations considered 
will have the examiner's initials adjacent thereto. The origi-
nal copy of the list,  form PTO-1449, or PTO/SB/08A and 
08B will be entered into the application file. The copy 
returned to applicant will serve both as acknowledgement 
of receipt of the information disclosure statement and as an 
indication as to which references were considered by the 
examiner. Forms PTO-326 and PTOL-37 include a box to 
indicate the attachment of form PTO-1449 or PTO/SB/08A 
and 08B .

Information which complies with requirements as dis-
cussed in this section but which is in a non-English lan-
guage will be considered in view of the concise explanation 
submitted (A(3) above) and insofar as it is understood on 
its face, e.g., drawings, chemical formulas, in the same 
manner that non-English language information in Office 
search files is considered by examiners in conducting 
searches. The examiner need not have the information 
translated unless it appears to be necessary to do so. The 
examiner will indicate that the non-English language infor-
mation has been considered in the same manner as consid-
eration is indicated for information submitted in English. 
The examiner should not require that a translation be filed 
by applicant. The examiner should not make any comment 
such as that the non-English language information has only 
been considered to the extent understood, since this fact is 
inherent.

Since information is required to be submitted in a sepa-
rate paper listing the citations rather than in the specifica-
tion, there is no need to mark "All checked"  or  "Checked" 
in the margin of a specification containing citations. 

If a statement fails to comply with requirements as dis-
cussed in this section for an item of information, a line 
should be drawn through the citation to show that it has not 
been considered. The other items of information listed that 
do comply with the rules and this section will be considered 
by the examiner and will be appropriately initialed.

C (3)	Documents Submitted As Part of Applicant's 
Reply to Office Action

Occasionally, documents are submitted and relied on by 
an applicant when replying to an Office action. These docu-
ments may be relied on by an applicant, for example, to 
show that an element recited in the claim is operative or 
that a term used in the claim has a recognized meaning in 
the art.  Documents may be in any form but are typically in 
the form of an affidavit, declaration, patent, or printed pub-
lication.

To the extent that a document is submitted as evidence 
directed to an issue of patentability raised in an Office 
action, and the evidence is timely presented, applicant need 
not satisfy the requirements of  37 CFR 1.97 and  37 CFR 
1.98 in order to have the examiner consider the information 
contained in the document relied on by applicant. In other 
words, compliance with the information disclosure rules is 
not a threshold requirement to have information considered 
when submitted by applicant to support an argument being 
made in a reply to an Office action.

At the same time, the document supplied and relied on 
by applicant as evidence need not be processed as an item 
of information that was cited in an information disclosure 
statement. The record should reflect whether the evidence 
was considered, but listing on a form (e.g., PTO-892, PTO-
1449, or PTO/SB/08A and 08B) and appropriate marking 
of the form by the examiner is not required.

For example, if applicant submits and relies on three pat-
ents as evidence in reply to the first Office action and also 
lists those patents on a PTO-1449 or PTO/SB/08A and 08B 
along with two journal articles, but does not file a statement 
under  37 CFR 1.97(e) or the fee set forth in  37 CFR 
1.17(p), it would be appropriate for the examiner to indi-
cate that the teachings relied on by applicant in the three 
patents have been considered,  but  to  line  through the 
citation of all five documents on the PTO-1449 or PTO/SB/
08A and 08B and to inform applicant that the information 
disclosure statement did not comply with  37 CFR 1.97(c).

D.	Information Printed on Patent

A citation listed on form PTO-1449 or PTO/SB/08A and 
08B and considered by the examiner in accordance with 
this section will be printed on the patent. A citation listed in 
a separate paper, equivalent to but not on form PTO-1449 
or PTO/SB/08A and 08B, and considered by the examiner 
in accordance with this section will be printed on the patent 
if the list is on a separate sheet which is clearly identified as 
an information disclosure statement and the list lends itself 
to easy capture of the necessary information by the Office 
printing contractor, i.e., each item of information is listed 
on a single line, the lines are at least double-spaced from 
each other, the information is uniform in format for each 
listed item, and the list includes a column for the exam-
iner's initials to indicate that the information was consid-
ered. 

>If the applicant does not provide classification informa-
tion for a citation, or if the examiner lines through incorrect 
classification data, the citation will be printed on the face of 
the patent without the classification information.<  If a U.S. 
patent application number is listed on a PTO-1449 or PTO/
SB/08A and 08B form or its equivalent and the examiner 
considers the information and initials the form, the applica-
tion number will be printed on the patent. Applicants may 
wish to list U.S. patent application numbers on other than a 
form PTO-1449 or PTO/SB/08A and 08B format to avoid 
the application numbers of pending applications being pub-
lished on the patent. If a citation is not printed on the patent 
but has been considered by the examiner in accordance 
with this section, the patented file will reflect that fact as 
noted in C(2) above.

Form PTO-1449. Information Disclosure Citation in an Application

Form PTO/SB/08A. Information Disclosure Statement by Applicant

Form PTO/SB/08B. Information Disclosure Statement by Applicant