Types, Cross-Noting, and Status of Application

201	Types of Applications

201.01	Sole

201.02	Joint

201.03	Correction of Inventorship in an Application 

201.04	Parent Application  

201.04(a)	Original Application 

201.04(b)	Provisional Application 

201.05	Reissue Application 

201.06	Division Application 

201.06(a)	Former 37 CFR 1.60 Divisional-Continuation 
Procedure 

201.06(b)	Former 37 CFR 1.62 File Wrapper Continuing 
Procedure  

201.06(c)	37 CFR 1.53(b) and 37 CFR 1.63(d) 
Divisional-Continuation Procedure 

201.06(d)	37 CFR 1.53(d) Continued Prosecution 
Application (CPA) Practice 

201.07	Continuation Application 

201.08	Continuation-in-Part Application  

201.09	Substitute Application  

201.10	Refile  

201.11	Continuity Between Applications: When Enti-
tled to Filing Date  

201.11(a)	Filing of Continuation or  Continuation-in-Part 
Application During Pendency of International 
Application  Designating the United States  

201.12	Assignment Carries Title  

201.13	Right of Priority of Foreign Application  

201.13(a)	Right of Priority Based Upon an Application 
for an Inventor's Certificate 

201.13(b)	Right of Priority Based Upon an  International 
Application Filed Under the Patent 
Cooperation Treaty  

201.14	Right of Priority, Formal Requirements 

201.14(a)	Right of Priority, Time for Filing Papers  

201.14(b)	Right of Priority, Papers Required  

201.14(c)	Right of Priority, Practice  

201.14(d)	Proper Identification of Priority Application  

201.15	Right of Priority, Overcoming a Reference 

201.16	Using Certificate of Correction to Perfect 
Claim for Priority Under 35 U.S.C. 119(a)-(d) 

202	Cross-Noting 

202.01	In Specification  

202.02	Notation on File Wrapper Regarding Prior U.S. 
Applications, Including Provisional Applica-
tions 

202.03	Notation on File Wrapper When Priority Is 
Claimed for Foreign Application 

202.04	In Oath or Declaration  

202.05	In Case of Reissues  

203	Status of Applications  

203.01	New  

203.02	Rejected 

203.03	Amended 

203.04	Allowed or in Issue 

203.05	Abandoned  

203.06	Incomplete 

203.07	Abandonment for Failure to Pay Issue Fee 

203.08	Status Inquiries 

203.08(a)	Congressional and Other Official Inquiries 

 

201	Types of 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 applica-
tion.

(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 1.9.  Definitions. 

(a)(1)	A national application as used in this chapter means a U.S. 
application for patent which was either filed in the Office under 35 U.S.C. 
111, or which entered the national stage from an international application 
after compliance with 35 U.S.C. 371.

(2)	A provisional application as used in this chapter means a 
U.S. national application for patent filed in the Office under 35 U.S.C. 
111(b). 

(3)	A nonprovisional application as used in this chapter means a 
U.S. national application for patent which was either filed in the Office 
under 35 U.S.C. 111(a), or which entered the national stage from an inter-
national application after compliance with 35 U.S.C. 371.

(b)	An international application as used in this chapter means an 
international application for patent filed under the Patent Cooperation 
Treaty prior to entering national processing at the Designated Office stage.

*****

NATIONAL APPLICATIONS (35 U.S.C. 111) VS. 
NATIONAL STAGE APPLICATIONS (35 U.S.C. 371)

Nonprovisional and provisional applications are national 
applications. Treatment of national applications under 35 
U.S.C. 111 and national stage applications under 35 U.S.C. 
371 are similar but not identical. Note the following exam-
ples:

(A)	Restriction practice under MPEP ? 806+ is 
applied to national applications under 35 U.S.C. 111(a) 
while unity of invention practice under MPEP Chapter 
1800 is applied to national stage applications under 35 
U.S.C. 371.

(B)	National nonprovisional applications filed under 
35 U.S.C. 111(a) without an executed oath or declaration or 
filing fee are governed by the notification practice set forth 
in 37 CFR 1.53(f) while national stage applications filed 
under 35 U.S.C. 371 without an oath or declaration or 
national stage fee are governed by the notification practice 
set forth in 37 CFR 1.494 and 1.495.

National patent applications fall under three broad types: 

(A)	applications for patent under 35 U.S.C. 101 relat-
ing to a "new and useful process, machine, manufacture, or 
composition of matter, etc."; 

(B)	applications for plant patents under 35 U.S.C. 161; 
and

(C)	applications for design patents under 35 U.S.C. 
171. 

The first type of patents are sometimes referred to as 
"utility" patents or "mechanical" patents when being con-
trasted with plant or design patents. The specialized proce-
dure which pertains to the examination of applications for 
design and plant patents are treated in detail in Chapters 
1500 and 1600, respectively. National applications include 
original (nonprovisional), provisional, plant, design, reis-
sue, divisional, and continuation applications (which may 
be filed under 37 CFR 1.53(b)), continued prosecution 
applications (CPA) (filed under 37 (CFR 1.53(d)) and con-
tinuation-in-part applications (which may be filed under 37 
CFR 1.53(b).

201.01	Sole

An application wherein the invention is presented as that 
of a single person is termed a sole application.

201.02	Joint

A joint application is one in which the invention is pre-
sented as that of two or more persons. See MPEP ? 605.07.

201.03	Correction of Inventorship in an 
Application [R-1]

Correction of inventorship in an application is permitted 
by amendment under 35 U.S.C. 116, which is implemented 
by 37 CFR 1.48. The utilization of a petition under 37 CFR 
1.48 will generally correct the inventorship in the applica-
tion in which it is filed. 37 CFR 1.48(a) is directed at cor-
recting the inventorship in an application where the 
inventorship was improperly set forth in the executed oath 
or declaration filed in the application. 37 CFR 1.48(b) is 
directed at correcting the inventorship where the executed 
oath or declaration had correctly set forth the inventorship 
but due to prosecution of the application, e.g., claim cancel-
lation or amendment, fewer than all of the currently named 
inventors are the actual inventors of the remaining claims. 
37 CFR 1.48(c) is directed at correcting the inventorship 
where the executed oath or declaration had correctly set 
forth the inventorship but due to amendment of the claims 
to include previously unclaimed but disclosed subject mat-
ter, one or more inventors of the amended subject matter 
must be added to the current inventorship. 37 CFR 1.48(d) 
is directed at provisional applications where an inventor is 
to be added. 37 CFR 1.48(e) is directed at provisional 
applications where an inventor is to be deleted. 37 CFR 
1.48(f) operates to automatically correct the inventorship 
upon filing of an executed oath or declaration under 37 
CFR 1.63 in a nonprovisional application or upon filing of 
a cover sheet in a provisional application.

Correction of inventorship may also be obtained by the 
filing of a continuing application under 37 CFR 1.53 with-
out the need for filing a petition under 37 CFR 1.48, either 
in the application containing the inventorship error (to be 
abandoned) or in the continuing application. The continu-
ing application must be filed with the correct inventorship 
named therein. The filing of a continuing application to 
correct the inventorship is appropriate if at least one of the 
correct inventors has been named in the prior application 
(35 U.S.C. 120 and 37 CFR 1.78(a)(1)).  That is, at least 
one of the correct inventors must be named in the executed 
oath or declaration filed in the prior application, or where 
no executed oath or declaration has been submitted in the 
prior application but the names of the inventors were set 
forth in the application papers pursuant to 37 CFR 
1.41(a)(1).  Where the names of the inventors are to be 
added, correction of inventorship can be accomplished by 
filing a continuing application under 37 CFR 1.53(b) with a 
newly executed oath or declaration under 37 CFR 1.63(a). 
Where the name of an inventor(s) is to be deleted, applicant 
can file a continuing application with a request for deletion 
of the name of the inventor(s).  The continuing application 
may be filed under 37 CFR 1.53(b) or 37 CFR 1.53(d).  
Note the requirements of 37 CFR 1.78 (a)(1)(ii)-(iv). 

In certain instances where the statement of the lack of 
deceptive intent of the inventor to be added or deleted can-
not be obtained, a petition under 37 CFR 1.183 requesting 
waiver of that requirement may be possible. 

For provisional applications, it may not be necessary to 
correct the inventorship under 37 CFR 1.48 (d) and (e) 
unless there would be no overlap of inventors upon the fil-
ing of the nonprovisional application with the correct 
inventorship.  See this MPEP section, headings "37 CFR 
1.48(d)" and "37 CFR 1.48(e)."

The need to correct the inventorship in any U.S. nonpro-
visional or provisional application may in part be depen-
dent upon whether a foreign filing under the Paris 
Convention will occur subsequent to the U.S. filing. See 
MPEP ? 201.13.

37 CFR 1.48 does not apply to reissue applications as is 
noted in its title, whether correcting an inventorship error in 
the patent to be reissued or in the reissue application itself.  
Where an error in inventorship**>in a patent is to be cor-
rected via a reissue application, see MPEP ?  1412.04. 
Where such an error is to be corrected via a certificate of 
correction under 37 CFR  1.324, see MPEP ?  1481.<

Where a petition under 37 CFR 1.48 is denied in a final 
agency action, the examiner must determine whether a 
rejection under 35 U.S.C. 102(f) or (g) is appropriate. 
Where the petition under 37 CFR 1.48 has been entered (for 
a decision thereon) and is dismissed (due to a defect that 
can be corrected) consideration under 35 U.S.C. 102(f) or 
(g) would be premature. 

Although 37 CFR 1.48 does not contain a diligence 
requirement for filing the petition, once an inventorship 
error is discovered, timeliness requirements under 37 CFR 
1.116 and 37 CFR 1.312 apply. For allowed applications 
where the issue fee has been paid prior to the entry of a 
petition under 37 CFR 1.48, if the petition under 37 CFR 
1.48 is dismissed or denied in an Office action, the applica-
tion must be withdrawn from issue so that applicant would 
be given time to correct the defect(s). If the petition under 
37 CFR 1.48 is granted, then it would not be necessary to 
withdraw the application from issue. 

 Petitions under 37 CFR 1.48 are generally decided by 
the primary examiner except:

(A)	When the application is involved in an interfer-
ence (decided by the Board of Patent Appeals and Interfer-
ences); 

(B)	When the application is a national stage applica-
tion filed under 35 U.S.C. 371 >which, as of the date of fil-
ing of the petition, has not been accepted as satisfying the 
requirements for entry into the national stage< (decided in 
the PCT Legal Office); 

(C)	When accompanied by a petition under 37 CFR 
1.183 requesting waiver of a requirement under 37 CFR 
1.48(a) or (c), e.g., waiver of the statement of lack of 
deceptive intent by an inventor to be added or deleted, or 
waiver of the reexecution of the declaration by all of the 
inventors (decided in the Office of Petitions); and

(D)	When a second conversion under 37 CFR 1.48(a) 
is attempted (decided by the Group Director).

When any petitions for correction of inventorship under 
37 CFR 1.48(a)-(c), or change in name under 37 CFR 1.182 
are granted, the examiner will acknowledge any addition or 
deletion of the names of inventors by using either Form 
Paragraph 2.14 or Form Paragraph 2.14.01 in the next 
Office communication to applicant or his attorney. It will 
be necessary to revise the PALM records, issue a corrected 
filing receipt, and change the bib-data sheet on the file 
wrapper. The correction or 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 or cor-
rections." See MPEP ? 605.04(g).

?  2.14 Correction of Inventorship Under 37 CFR 1.48(a) or (c), 
Sufficient 

In view of the papers filed [1], it has been found that this nonprovi-
sional application, as filed, through error and without deceptive intent, 
improperly set forth the inventorship, and accordingly, this application has 
been corrected in compliance with 37 CFR 1.48 ([2]). The inventorship of 
this application has been changed by  [3].

The application will be forwarded to the Office of Initial Patent Exam-
ination (OIPE) for issuance of a corrected filing receipt, and correction of 
the file jacket and PTO PALM data to reflect the inventorship as corrected.

Examiner Note:

1.	In bracket 2, insert --a-- or --c--, as appropriate.

2.	In bracket 3, insert explanation of correction made, including addi-
tion or deletion of appropriate names.

?  2.14.01 Correction of Inventorship Under 37 CFR 1.48(b), 
Sufficient 

In view of the papers filed [1], the inventorship of this nonprovisional 
application has been changed by the deletion of [2].

The application will be forwarded to the Office of Initial Patent Exam-
ination (OIPE) for issuance of a corrected filing receipt, and correction of 
the file jacket and PTO PALM data to reflect the inventorship as corrected.

Examiner Note:

1.	This form paragraph is to be used only for 37 CFR 1.48(b) correc-
tions.

2.	In bracket 2, insert the names of the deleted inventor(s).

 The grant or denial of a petition under 37 CFR 1.48(a) 
may result in the lack of inventorship overlap between a 
parent application and a continuing application and the 
consequent inability to claim benefit in the continuing 
application of the parent application's filing date under 35 
U.S.C. 120. Intervening references must then be consid-
ered.

For correction of inventorship in a patent, see 37 CFR 
1.324 and MPEP ? 1481. 

A petition under 37 CFR 1.48 will not be required: 

(A)	Where an application is to issue with the correct 
inventorship based on the allowed claims even though the 
application may have been filed with an incorrect inventor-
ship based on the claims as originally submitted;

(B)	Where a typographical or transliteration error in 
the spelling of an inventor's name is discovered, the Office 
should simply be notified of the error. A new oath or decla-
ration is not required. Reference to the notification will be 
made on the previously filed oath or declaration. See 37 
CFR 1.19(h) for issuance of a corrected filing receipt;

(C)	Where an inventor's name has been changed after 
the application has been filed, see MPEP ? 605.04(c);

(D)	Where a court has issued an order under 35 U.S.C. 
256 for correction of the inventorship of a patent, it should 
be submitted directly to the Certificate of Correction Divi-
sion along with the Office's certificate of correction form, 
PTO-1050. A new declaration under 37 CFR 1.63 is not 
required;

(E)	Where there is no change of individual but an 
incorrect name was given, see 37 CFR 1.182 and MPEP ? 
605.04(g);

(F)	In a nonprovisional application filed under 35 
U.S.C. 111(a), where the first-filed executed oath or decla-
ration was filed on or after December 1, 1997 and names 
the correct inventors, but the inventive entity on the exe-
cuted oath or declaration differs from that which was set 
forth on filing of the application, e.g., the application trans-
mittal letter or an unexecuted oath or declaration. See 37 
CFR 1.48(f)(1);

(G)	In a provisional application filed under 35 U.S.C. 
111(b), where the cover sheet was filed on or after Decem-
ber 1, 1997 which names the correct inventors, but the 
inventive entity on the cover sheet differs from that which 
was set forth on filing of the provisional application with-
out a cover sheet. See 37 CFR 1.48(f)(2). 

APPLICATIONS FILED UNDER 37 CFR 1.53(f) - NO 
OATH/DECLARATION

The Office will issue a filing receipt listing the inventors 
identified at the time of filing of the application even if the 
application was filed under 37 CFR 1.53(f) without an exe-
cuted oath or declaration. Where the first-filed executed 
oath or declaration was filed on or after December 1, 1997 
and sets forth an inventive entity which is different from 
the inventive entity initially set forth at the time of filing of 
the application, the actual inventorship of the application 
will be taken from the executed oath or declaration. See 37 
CFR 1.41(a)(1). A petition under 37 CFR 1.48(a) will not 
be necessary. See 37 CFR 1.48(f).

Where the first-filed executed oath or declaration was 
submitted prior to December 1, 1997 in an application filed 
without an executed oath or declaration, if the inventive 
entity identified on the executed oath or declaration differs 
from the inventive entity identified at the time of filing of 
the application, a petition under 37 CFR 1.48(a) or (c) must 
also be submitted. Upon the grant of the petition under 37 
CFR 1.48 by the primary examiner, the application will be 
returned to the Office of Initial Patent Examination (OIPE) 
for the mailing of a corrected filing receipt.

The original named inventors should not execute or sub-
mit an oath or declaration under 37 CFR 1.63 merely to 
timely complete the filing requirements in reply to a 
"Notice to File Missing Parts of Application" where the 
possibility of an error in inventorship has been discovered 
or signed by someone who cannot properly make the aver-
ments therein. Additional time to reply to the Notice is 
available under 37 CFR 1.136(a) and possibly under 37 
CFR 1.136(b).  >See  MPEP ? 710.02(d).<

Example

A nonprovisional application is filed (either prior to, on 
or after December 1, 1997) naming A as the sole inven-
tor without an executed declaration under 37 CFR 1.63. 
Only claim 1 is presented.

A "Notice to File Missing Parts of Application" is 
mailed prior to December 1, 1997. In timely reply 
thereto after December 1, 1997, a preliminary amend-
ment adding claim 2, and a declaration under 37 CFR 
1.63 executed by inventors A and B are submitted with 
B being added in view of claim 2. A petition under 37 
CFR 1.48(c) is not required, in that 37 CFR 1.48(f)(1) 
will act to set forth an inventorship of A and B.

Similarly, where a preliminary amendment canceling or 
amending claims concomitantly requires the deletion of an 
inventor, such deletion may be accomplished by the sub-
mission of a first-filed executed oath or declaration on or 
after December 1, 1997 naming the actual inventive entity. 
A petition under 37 CFR 1.48(b) would not be necessary.

37 CFR 1.48(a)

37 CFR 1.48.  Correction of inventorship in a patent application, 
other than a reissue application. 

(a)	If the inventive entity is set forth in error in an executed ? 1.63 
oath or declaration in an application, other than a reissue application, and 
such error arose without any deceptive intention on the part of the person 
named as an inventor in error or on the part of the person who through 
error was not named as an inventor, the application may be amended to 
name only the actual inventor or inventors. When the application is 
involved in an interference, the amendment must comply with the require-
ments of this section and must be accompanied by a motion under ? 1.634. 
Such amendment must be accompanied by:

(1)	A petition including a statement from each person being 
added as an inventor and from each person being deleted as an inventor 
that the error in inventorship occurred without deceptive intention on his 
or her part;

(2)	An oath or declaration by the actual inventor or inventors as 
required by ? 1.63 or as permitted by ?? 1.42, 1.43 or 1.47;

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

(4)	If an assignment has been executed by any of the original 
named inventors, the written consent of the assignee (see ? 3.73(b)).

*****

 Under 37 CFR 1.48(a), if the correct inventor or inven-
tors are not named in an executed oath or declaration under 
37 CFR 1.63 in a nonprovisional application for patent, the 
application can be amended to name only the actual inven-
tor or inventors so long as the error in the naming of the 
inventor or inventors occurred without any deceptive inten-
tion on the part of the person named as an inventor in error 
or the person who through error was not named as an 
inventor.

37 CFR 1.48(a) requires that the amendment be accom-
panied by:  (1) a petition including a statement from each 
person being added and from each person being deleted as 
an inventor that the error occurred without deceptive inten-
tion on his or her part; (2) an oath or declaration by each 
actual inventor or inventors as required by 37 CFR 1.63 or 
as permitted by 37 CFR 1.42, 1.43 or 1.47; (3) the fee set 
forth in 37 CFR 1.17 (i); and (4) the written consent of any 
existing assignee, if any of the originally named inventors 
has executed an assignment. 

Correction may be requested in cases where the person 
originally named as inventor was in fact not an inventor or 
the sole inventor of the subject matter being claimed.  If 
such error occurred without any deceptive intention on the 
part of the inventor named and/or not named in error, the 
Office has the authority to substitute the true inventive 
entity for the erroneously named inventive entity. Instances 
where corrections can be made include changes from: a 
mistaken sole inventor to a different but actual sole inven-
tor; a mistakenly identified sole inventor to different, but 
actual, joint inventors; a sole inventor to joint inventors to 
include the original sole inventor; erroneously identified 
joint inventors to different but actual joint inventors; erro-
neously identified joint inventors to a different, but actual, 
sole inventor. (Note that 35 U.S.C. 120 and 37 CFR 1.78 
require an overlap of inventorship, hence, refiling, rather 
than petitioning under 37 CFR 1.48, to change inventorship 
where the change would not result in an inventorship over-
lap may result in the loss of a priority claim.)

A.	Statement of Lack of Deceptive Intention

Where a similar inventorship error has occurred in more 
than one application for which correction is requested 
wherein petitioner seeks to rely on identical  statements, 
only one original set need be supplied if copies are submit-
ted in all other applications with a reference to the applica-
tion containing the originals (original oaths or declarations 
under 37 CFR 1.63 and written consent of assignees along 
with separate petition fees must be filed in each applica-
tion).

The statement required from each inventor being added 
or deleted may simply state that the inventorship error 
occurred without deceptive intention. The statement need 
not be a verified statement (see MPEP ? 605).

On very infrequent occasions, the requirements of 37 
CFR 1.48(a) have been waived upon the filing of a petition 
and fee under 37 CFR 1.183 (along with the petition and 
fee under 37 CFR 1.48(a)) to permit the filing of a state-
ment by less than all the parties required to submit a state-
ment. In re Cooper, 230 USPQ 638, 639 (Dep. Assist. 
Comm'r Pat. 1986).  However, such a waiver will not be 
considered unless the facts of record unequivocally support 
the correction sought. In re Hardee, 223 USPQ 1122, 1123 
(Comm'r Pat. 1984). As 37 CFR 1.48(a) is intended as a 
simple procedural remedy and does not represent a substan-
tive determination as to inventorship, issues relating to the 
inventors' or alleged inventors' actual contributions to con-
ception and reduction to practice are not appropriate for 
consideration in determining whether the record unequivo-
cally supports the correction sought.

In those situations where an inventor to be added refuses 
to submit a statement supporting the addition or such party 
cannot be reached, waiver under 37 CFR 1.183 of the 
requirement for a statement from that party would be 
appropriate upon a showing of such refusal or inability to 
reach the inventor.  Every existing assignee of the original 
named inventors must give its consent to the requested cor-
rection.  Where there is more than one assignee giving its 
consent, the extent of that interest (percentage) should be 
shown. Where no assignment has been executed by the 
inventors, or if deletion of a refusing inventor is requested, 
waiver will not be granted absent unequivocal support for 
the correction sought.  Petitions under 37 CFR 1.47 are not 
applicable to the requirement for statements from each 
originally named inventor.

An available remedy to obtain correction of inventorship 
where waiver of a required statement is not available to 
correct the inventorship in a particular application is to 
refile the application naming the correct inventive entity.  A 
petition under 37 CFR 1.48(a) would not then be required 
in the newly filed application as no correction would be 
needed.  Furthermore, a petition under 37 CFR 1.48(a) 
would also not be required in the prior application that was 
refiled, since the prior application will be abandoned.  Ben-
efit of the parent application's filing date would be avail-
able under 35 U.S.C. 120 provided there is at least one 
inventor overlap between the two applications.  (Note:  a 
sole-to-sole correction would not obtain benefit under 35 
U.S.C. 120). 

B.	Oath or Declaration

 An oath or declaration under 37 CFR 1.63 by each 
actual inventor must be presented.  While each inventor 
need not execute the same oath or declaration, each oath or 
declaration executed by an inventor must contain a com-
plete listing of all inventors so as to clearly indicate what 
each inventor believes to be the appropriate inventive 
entity.  Where individual declarations are executed, they 
must be submitted as individual declarations rather than 
combined into one declaration.  For example, where the 
inventive entity is A and B, a declaration may not be exe-
cuted only by A naming only A as the inventor and a differ-
ent declaration may not be executed only by B naming only 
B as the inventor, which two declarations are then com-
bined into one declaration with a first page of boiler plate, a 
second page with A's signature, and a second page with B's 
signature (so that it appears that the declaration was exe-
cuted with the entire inventive entity appearing in the dec-
laration when it did not).

Conflicting oaths or declarations filed:  If the first exe-
cuted oaths or declarations that are submitted name differ-
ent inventive entities (e.g., one declaration names A, B, and 
C as inventors and a second declaration names D as the 
inventor) and are filed on the same day, the application will 
be considered to name the inventors named in both declara-
tions (A, B, C, and D) and a new oath or declaration in 
compliance with 37 CFR 1.63 including the entire inven-
tive entity will be required.  Where an application is filed 
with an executed declaration under 37 CFR 1.63 naming an 
inventive entity that is in conflict with another paper filed 
in the application, such as the transmittal letter, the exe-
cuted declaration will govern.  However, where an exe-
cuted declaration is never submitted and the application 
papers are in conflict as to the inventorship, each party 
identified as an inventor on filing will be considered to 
have been named as part of the inventive entity. See 37 
CFR 1.41(a)(1).

37 CFR 1.47 is available to meet the requirement for an 
oath or declaration under 37 CFR 1.63 as for example 
where A, B, and C were originally named as inventors and 
D who refuses to cooperate is to be later added as an inven-
tor.  The oath or declaration under 37 CFR 1.63 of inventor 
D may be supplied pursuant to 37 CFR 1.47(a), but note 
that the required 37 CFR 1.48(a)(1) statement must still be 
supplied by inventor D (an unlikely event in view of the 
inability to obtain the executed oath or declaration under 37 
CFR 1.63), or waiver thereof petitioned under 37 CFR 
1.183.  Alternatively, where D is to be added as an inventor 
(where inventors A, B, and C have previously executed the 
application under 37 CFR 1.63) and it is original inventor 
A who refuses to cooperate, the statement under 37 CFR 
1.48(a)(1) is only required to be signed by inventor D.  
Originally named inventor A is merely required to reexe-
cute an oath or declaration in compliance with 37 CFR 
1.63.  Petitions under 37 CFR 1.47 are only applicable to an 
original oath or declaration and are not applicable to the 
reexecution of another oath or declaration by A.  In such 
circumstances, a petition under 37 CFR 1.183 should be 
considered requesting waiver of the requirement of 37 CFR 
1.64 that each of the actual inventors, i.e., inventor A, exe-
cute the oath or declaration, particularly where assignee 
consent is given to the requested correction.  Absent 
assignee consent, the petition under 37 CFR 1.183 request-
ing waiver of the reexecution of the oath or declaration will 
be evaluated as to whether the nonsigning inventor was 
actually given the opportunity to reexecute the oath or dec-
laration, or whether the nonsigning inventor could not be 
reached.

Applications filed with both petitions under 37 CFR 1.47 
and 1.48(a) will be forwarded to the Office of Petitions, 
after mailing the filing receipt by the Office of Initial Patent 
Examination, for consideration of the petitions.  In those 
instances wherein petitions under 37 CFR 1.48(a) and 37 
CFR 1.47 have both been filed in an application, the Office 
of Petitions may first issue a decision on the petition under  
37 CFR 1.48(a) so as to determine the appropriate oath or 
declaration under 37 CFR 1.63 required for the petition 
under 37 CFR 1.47.

The oath or declaration submitted subsequent to the fil-
ing date (37 CFR 1.53(f)) of an application filed under 37 
CFR 1.53(b) must clearly identify the previously filed spec-
ification it is intended to execute. See MPEP ? 601.01(a). 

C.	Fee

 Where waiver under 37 CFR 1.183 is requested in rela-
tion to a requirement under 37 CFR 1.48(a), petition fees 
under both 37 CFR 1.48(a) and 37 CFR 1.183 are required.  
Similarly, where in addition to a petition under 37 CFR 
1.48, two petitions under 37 CFR 1.183 are presented, e.g., 
one requesting waiver of a requirement under 37 CFR 1.48 
and the other requesting waiver of the reexecution of an 
oath or declaration under 37 CFR 1.64, three petition fees 
are required (one for the petition filed under 37 CFR 1.48 
and two for the petitions filed under 37 CFR 1.183).

Where a similar error has occurred in more than one 
application a separate petition fee must be submitted in 
each application in which correction is requested.

If the petition fee has not been submitted or authorized 
the petition will be dismissed.

D.	Written Consent of Assignee

 The written consent of every existing assignee of the 
original named inventors must be submitted.  37 CFR 
1.48(a)(4). 37 CFR 1.48(a) does not limit assignees to those 
who are recorded in the Patent and Trademark Office 
records. The Office employee deciding the petition should 
check the file record for any indication of the existence of 
an assignee (e.g., a small entity statement from an 
assignee.)

Where no assignee exists petitioner should affirmatively 
state that fact. If the file record including the petition is 
silent as to the existence of an assignee it will be presumed 
that no assignee exists. Such presumption should be set 
forth in the decision to alert petitioners to the requirement.

The individual signing on behalf of the assignee giving 
its consent to the requested inventorship correction, should 
specifically state that he or she has the authority to act on 
behalf of the assignee.  In the absence of such a statement, 
the consent will be accepted if it is signed by an appropriate 
official of the assignee (e.g., president, vice president, sec-
retary, treasurer, or derivative thereof) if the official's title 
has been made of record.  A general statement of authority 
to act for the assignee, or on the specific matter of consent, 
or the appropriate title of the party signing on behalf of the 
assignee should be made of record in the consent.  How-
ever, if it appears in another paper of record, e.g., small 
entity statement, it is also acceptable.  Further, the assignee 
must establish its ownership of the application in accor-
dance with 37 CFR 3.73. MPEP ? 324.

E.	Continuing Applications

35 U.S.C. 120 permits a continuing application to claim 
the benefit of the filing date of a copending, previously 
filed, parent application provided there is inventorship 
overlap between the continuing application and the parent 
application.  If the inventive entity of a continuing applica-
tion includes an inventor named in the parent application, 
the inventorship overlap required by 35 U.S.C. 120 is met. 

Example

The parent application names inventors A and B and 
claims inventions 1 and 2.  Inventor A contributes only 
to invention 1 and inventor B contributes only to inven-
tion 2.  A restriction requirement is made and invention 
1 was elected.  Upon allowance of claims directed to 
invention 1 and cancellation of claims directed to 
invention 2, a petition under 37 CFR 1.48(b) was filed 
requesting deletion of inventor B.  The petition under 
37 CFR 1.48(b) was granted by the primary examiner.  
Prior to the issuance of the parent application, a divi-
sional application claiming benefit under 35 U.S.C. 120 
to the parent application, is filed claiming only inven-
tion 2 and naming only inventor B.  The inventorship 
overlap required by 35 U.S.C. 120 is met in this 
instance even though at the time of filing of the divi-
sional application, the inventorship overlap was lost as 
a result of the deletion of an inventor in the parent 
application.  The overlap of inventorship need not be 
present on the date the continuing application is filed 
nor present when the parent application issues or 
becomes abandoned. 

On filing a continuing application under 37 CFR 1.53(b) 
or (d) it should not be assumed that an error in inventorship 
made in a parent application was in fact corrected therein in 
response to a petition under 37 CFR 1.48(a) unless a deci-
sion from the Patent and Trademark Office to that effect 
was received by petitioner. In a continued prosecution 
application (CPA) filed under 37 CFR 1.53(d), a petition to 
add an inventor to a parent application that was not acted 
on (e.g., filed after final rejection) will be automatically 
considered in the CPA.  Until the petition is granted, how-
ever, the inventorship remains the same as the prior appli-
cation.  A continuing application naming the additional 
inventor can be filed under 35 U.S.C. 111(a) and 37 CFR 
1.53(b) with a newly executed oath or declaration by the 
new inventive entity along with a request for priority under 
35 U.S.C. 120 without the need for a decision on the peti-
tion under 37 CFR 1.48 filed in the parent application.

Should an error in inventorship in a parent application be 
discovered, whether it is the need to add and/or to delete 
inventors, when preparing to file a continuing application, 
the continuing application may be filed under 37 CFR 
1.53(b) with the correct inventive entity without the need 
for a petition under 37 CFR 1.48(a) in the parent or con-
tinuing application provided the parent application is to be 
abandoned on filing of the continuing application.  In filing 
the continuing application under 37 CFR 1.53(b), a copy of 
an oath or declaration from the prior application can only 
be used where inventors are to be deleted (37 CFR 
1.53(b)(1) and 37 CFR 1.63(d)(1)(ii)), but not where inven-
tors are to be added.  Where inventors are to be added, a 
newly executed oath or declaration must be submitted.  See 
37 CFR 1.63(d)(5).

After discovery of an inventorship error, the application 
can also be refiled under 37 CFR 1.53(d)(4) as a CPA 
where inventors are only to be deleted.

In filing a continuing application to correct the inventor-
ship, whether utilizing a copy of the oath or declaration 
from the prior application under 37 CFR 1.53(b) or a CPA 
filing under 37 CFR 1.53(d), it is important to recognize 
that 37 CFR 1.78 requires for priority purposes that the 
prior application must either have had the filing fee, or the 
retention fee as set forth in 37 CFR 1.21(l), paid within the 
period set forth in 37 CFR 1.53(f) so as to establish copen-
dency. See 37 CFR 1.78(a)(1)(iii) and 37 CFR 
1.78(a)(1)(iv). 

Should a continuing application be filed either under 37 
CFR 1.53(b)(1) where a copy of the oath or declaration 
from the prior application is utilized, or under 37 CFR 
1.53(d) as a CPA, and purports to add an inventor, the 
inventorship of the prior application will be retained in the 
continuing application as addition of an inventor is not per-
mitted in these instances.  The absence of a petition to cor-
rect the inventorship submitted with the continuing 
application will not affect the filing date of the continuing 
application.  However, the retained inventorship must then 
be corrected by the filing of a petition under 37 CFR 
1.48(a) in the continuing application stating that the error in 
failing to name the additional inventor in the prior applica-
tion was without deceptive intention.  Where an inventor is 
to be added, it is recommended that a continuing applica-
tion be filed under 37 CFR 1.53(b) with a newly executed 
oath or declaration and not be filed with a copy of the oath 
or declaration from the prior application.  This procedure 
eliminates the need for a petition under 37 CFR 1.48.

An inventorship error discovered while prosecuting a 
continuing application that occurred in both an abandoned 
parent application and the continuing application can be 
corrected in both applications by filing a single petition in 
the continuing application (e.g., A + B named in parent, B 
+ C named in continuing application, actual inventorship is 
C +D thereby eliminating inventorship overlap and result-
ing loss of priority claim under 35 U.S.C. 120 if the error is 
not corrected in abandoned parent application as well as in 
continuation application).  Absent such loss of inventorship 
overlap, correction need not be made in the abandoned 
application.

When entering the national stage under 35 U.S.C. 371, 
correction of inventorship is via the provisions of 37 CFR 
1.48(a).  Whereas the first sentence of 37 CFR 1.48(a) 
refers to errors in the 37 CFR 1.63 oath or declaration, this 
is analogous to the misnaming of the applicant/inventor in 
the international application, and the procedure under 37 
CFR 1.48(a) applies. 

?  2.13 Correction of Inventorship Under 37 CFR 1.48(a), 
Insufficient

The petition to correct the inventorship of this nonprovisional applica-
tion under 37 CFR 1.48(a) is deficient because:

Examiner Note:

1.	This paragraph should only be used in response to requests to correct 
an error in the naming of the prior inventors in non-provisional applica-
tions.  If the request is merely to delete an inventor because claims were 
canceled or amended such that the deleted inventor is no longer an actual 
inventor of any claim in the application, use paragraph 2.13.01 instead of 
this paragraph.

Potential rejections

A rejection under 35 U.S.C. 102(f) or (g) must be considered if 
the petition is denied.

The grant or denial of the petition may result in the loss of inven-
torship overlap between a parent application and a continuing 
application and an inability to claim benefit in the continuing 
application of the parent application's filing date under 35 U.S.C. 
120.  Intervening references must then be considered.

2.	A primary examiner may not decide the petition if:

(a)	the petition is also accompanied by a petition under 37 CFR 1.183 
requesting waiver of one of the requirements explicitly set forth in 37 CFR 
1.48(a) (typically a refusal of one of the inventors to be added or deleted to 
execute the required statement of facts) - the petition for correction of 
inventorship and request for waiver of the rules should be forwarded to the 
Office of Petitions; or

(b)	it represents an attempt to effect a second conversion under 37 CFR 
1.48(a) - the second attempt must be returned to the Group Director.

3.	One or more of form paragraphs 2.13a - 2.13e should follow this 
form paragraph, as applicable.

4.	Where it appears that: 1) the inventor(s) to be added or deleted may 
be hostile and will not execute a required statement of facts, and 2) the 
actual inventorship would overlap the original inventorship (37 CFR 
1.78), follow this form paragraph with form paragraph 2.13f.

5.	Petitions under 37 CFR 1.41 to change inventorship where an exe-
cuted oath or declaration has not been filed are to be acted upon by OIPE.

6.	Where there is a correction in a person's name, e.g., due to misspell-
ing, or marriage, a petition under 37 CFR 1.48 is inappropriate. See MPEP 
? 605.04(b) and (c) for name changes.

7.	An initial executed oath or declaration under 37 CFR 1.63 may 
change the inventorship as originally set forth when the application is filed 
without an executed oath or declaration without petition for correction of 
inventorship (37 CFR 1.48(f)). 

?  2.13a Statement of Facts Problem (for Use Following FP 2.13, 
If Applicable)

The statement of facts by an inventor or inventors to be added or 
deleted does not explicitly state that the inventorship error occurred with-
out deceptive intent on his or her part or cannot be construed to so state. 

?  2.13b No New Oath or Declaration (for Use Following FP 2.13 
or 2.13.02, If Applicable)

An oath or declaration by each actual inventor or inventors listing the 
entire inventive entity has not been submitted.

?  2.13c Required Fee Not Submitted (for Use Following FP 2.13, 
2.13.01 or 2.13.02, If Applicable)

It lacks the required fee under 37 CFR 1.17(i).

?  2.13d Written Consent Missing (for Use Following FP 2.13 or 
2.13.02, If Applicable)

It lacks the written consent of any assignee of one of the originally 
named inventors.

?  2.13e 37 CFR 3.37(b) Submission (for Use Following FP 2.13 
or 2.13.02, If Applicable)

A 37 CFR 3.73(b) submission has not been received to support action 
by the assignee.

?  2.13f Hostile Inventor(s)/Inventorship Overlap (for Use 
Following FP 2.13, If Applicable)

As it appears that a party required by 37 CFR 1.48(a)(1) to submit a 
statement of facts may not be willing to submit such statement, applicant 
should consider either: a) submission of a petition under 37 CFR 1.183 to 
waive that requirement if the original named inventor(s) has assigned the 
entire right and interest to an assignee who has given its consent to the 
requested inventorship correction, MPEP ? 201.03, Verified Statement of 
Facts, or b) refiling the application (where addition is needed under 37 
CFR 1.53(b) with a new oath or declaration and any necessary petition 
under 37 CFR 1.47, or where only deletion is needed, either under 37 CFR 
1.53(b) utilizing a copy of a prior oath or declaration 37 CFR 1.63(d)(iii), 
or under 37 CFR 1.53(d)), thereby eliminating the need for a 37 CFR 1.48 
petition.

?  2.13.01 Correction of Inventorship Under 37 CFR 1.48(b), 
Insufficient

The petition requesting the deletion of an inventor in this nonprovi-
sional application under 37 CFR 1.48(b) is deficient because:

Examiner Note:

1.	This paragraph should only be used when the inventorship was pre-
viously correct when originally executed but an inventor is being deleted 
because claims have been amended or canceled such that he or she is no 
longer an inventor of any remaining claim in the non-provisional applica-
tion.  If the inventorship is being corrected because of an error in naming 
the correct inventors, use paragraph 2.13 instead of this paragraph.

2.	Follow this form paragraph with one or both of form paragraphs 
2.13c and 2.13g.

3.	See note 1 of form paragraph 2.13, Potential rejections.

?  2.13g Statement Under 37 CFR 1.48(b)(1) Problem (for Use 
Following FP 2.13.01, If Applicable)

The petition lacks the statement required under 37 CFR 1.48 (b)(1).

?  2.13.02 Correction of Inventorship Under 37 CFR 1.48(c), 
Insufficient

The petition to correct the inventorship in this nonprovisional applica-
tion under 37 CFR 1.48(c) requesting addition of an inventor(s) is defi-
cient because:

Examiner Note:

1.	This paragraph should only be used when the inventorship was pre-
viously correct when the application was originally executed, but the 
inventorship now needs to be changed due to subsequent addition of sub-
ject matter from the specification to the claims, which subject matter was 
contributed by a party not originally named as an inventor.

2.	See note 2 of form paragraph 2.13.

3.	Follow this form paragraph with any of form paragraphs 2.13b-
12.13e or 2.13h.

4.	See note 1 of form paragraph 2.13.01, Potential rejections.

5.	See notes 4-7 of form paragraph 2.13.

?  2.13h Statement of Facts, Added Inventor (for Use Following 
FP 2.13.02, If Applicable)

The statement of facts by the inventor(s) to be added does not explic-
itly state that the amendment of the inventorship is necessitated by amend-
ment of the claims and that the inventorship error occurred without 
deceptive intent on the part of the inventor(s) to be added, or cannot be 
construed to so state.

?  2.14 Correction of Inventorship Under 37 CFR 1.48(a) or (c), 
Sufficient 

In view of the papers filed [1], it has been found that this nonprovi-
sional application, as filed, through error and without deceptive intent, 
improperly set forth the inventorship, and accordingly, this application has 
been corrected in compliance with 37 CFR 1.48([2]).  The inventorship of 
this application has been changed by [3].

The application will be forwarded to the Office of Initial Patent Exam-
ination (OIPE) for issuance of a corrected filing receipt, and correction of 
the file jacket and PTO PALM data to reflect the inventorship as corrected.

Examiner Note:

1.	In bracket 2, insert --a-- or --c--, as appropriate.

2.	In bracket 3, insert explanation of correction made, including addi-
tion or deletion of appropriate names.

?  2.14.01 Correction of Inventorship Under 37 CFR 1.48(b), 
Sufficient 

In view of the papers filed [1], the inventorship of this nonprovisional 
application has been changed by the deletion of [2].

The application will be forwarded to the Office of Initial Patent Exam-
ination (OIPE) for issuance of a corrected filing receipt, and correction of 
the file jacket and PTO PALM data to reflect the inventorship as corrected.

Examiner Note:

1.	This form paragraph is to be used only for  37 CFR 1.48(b) correc-
tions.

2.	In bracket 2, insert the names of the deleted inventor(s).

37 CFR 1.48(b)

37 CFR 1.48.  Correction of inventorship in a patent application, 
other than a reissue application. 

*****

(b)	If the correct inventors are named in a nonprovisional applica-
tion, other than a reissue application, and the prosecution of the applica-
tion results in the amendment or cancellation of claims so that fewer than 
all of the currently named inventors are the actual inventors of the inven-
tion being claimed in the application, an amendment must be filed deleting 
the name or names of the person or persons who are not inventors of the 
invention being claimed. When the application is involved in an interfer-
ence, the amendment must comply with the requirements of this section 
and must be accompanied by a motion under ? 1.634.  Such amendment 
must be accompanied by:

(1)	A petition including a statement identifying each named 
inventor who is being deleted and acknowledging that the inventor's 
invention is no longer being claimed in the application; and

(2)	The fee set forth in ? 1.17(i).

*****

37 CFR 1.48(b) provides for deleting the names of per-
sons originally properly included as inventors, but whose 
invention is no longer being claimed in a nonprovisional 
application.  Such a situation would arise where claims 
have been amended or deleted during prosecution because 
they are unpatentable or as a result of a requirement for 
restriction of the application to one invention, or for other 
reasons.  A petition under  37 CFR 1.48(b) to delete an 
inventor would be appropriate prior to an action by the 
examining group where it is decided not to pursue particu-
lar aspects of an invention attributable to some of the origi-
nal named inventors. 

37 CFR 1.48(b) requires that the amendment be accom-
panied by: (1) a petition including a statement identifying 
each named inventor who is being deleted and acknowledg-
ing that the inventor's invention is no longer being claimed 
in the application; and (2) a fee under  37 CFR 1.17(i).  The 
statement may be signed by applicant's registered attorney 
or agent who then takes full responsibility for ensuring that 
the inventor is not being improperly deleted from the appli-
cation.  Written consent of any assignee is not required for 
petitions filed under  37 CFR 1.48(b).

37 CFR 1.48(c)

37 CFR 1.48.  Correction of inventorship in a patent application, 
other than a reissue application. 

*****

(c)	If a nonprovisional application, other than a reissue application, 
discloses unclaimed subject matter by an inventor or inventors not named 
in the application, the application may be amended to add claims to the 
subject matter and name the correct inventors for the application.  When 
the application is involved in an interference, the amendment must comply 
with the requirements of this section and must be accompanied by a 
motion under ? 1.634.  Such amendment must be accompanied by:

(1)	A petition including a statement from each person being 
added as an inventor that the amendment is necessitated by amendment of 
the claims and that the inventorship error occurred without deceptive 
intention on his or her part;

(2)	An oath or declaration by the actual inventor or inventors as 
required by ? 1.63 or as permitted by ?? 1.42, 1.43 or 1.47;

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

(4)	If an assignment has been executed by any of the original 
named inventors, the written consent of the assignee (see ? 3.73(b)).

*****

37 CFR 1.48(c) provides for the situation where a non-
provisional application discloses unclaimed subject matter 
by an inventor or inventors not named in the application 
when an executed declaration under  37 CFR 1.63 was first 
filed.  In such a situation, the nonprovisional application 
may be amended pursuant to  37 CFR 1.48(c) to add claims 
directed to the originally unclaimed but disclosed subject 
matter and also to name the correct inventors for the appli-
cation based on the newly added claims.  Any claims added 
to the application must be supported by the disclosure as 
filed and cannot add new matter.  

37 CFR 1.48(c) requires that the amendment must be 
accompanied by:  (1) a petition including a statement from 
each person being added as an inventor that the amendment 
is necessitated by an amendment to the claims and that the 
inventorship error occurred without deceptive intention on 
his or her part; (2) an oath or declaration by each actual 
inventor; (3) the fee under  37 CFR 1.17(i); and (4) the 
written consent of any assignee of the original named 
inventors.

37 CFR 1.48(d)

37 CFR 1.48.  Correction of inventorship in a patent application, 
other than a reissue application. 

*****

(d)	If the name or names of an inventor or inventors were omitted in 
a provisional application through error without any deceptive intention on 
the part of the omitted inventor or inventors, the provisional application 
may be amended to add the name or names of the omitted inventor or 
inventors.  Such amendment must be accompanied by:

(1)	A petition including a statement that the inventorship error 
occurred without deceptive intention on the part of the omitted inventor or 
inventors; and

(2)	The fee set forth in ? 1.17(q).

*****

37 CFR 1.48(d) provides a procedure for adding the 
name of an inventor in a provisional application, where the 
name was originally omitted without deceptive intent. 

37 CFR 1.48(d) requires that the amendment be accom-
panied by:  (1) a petition including a statement that the 
inventorship error occurred without deceptive intention on 
the part of the omitted inventor or inventors; and (2) the fee 
set forth in  37 CFR 1.17(q).  >The statement of lack of 
deceptive intent may be included in the petition and may be 
signed by a registered attorney or agent. A statement of 
lack of deceptive intent is not required from any of the orig-
inal or to be added inventors.<

37 CFR 1.48(e)

37 CFR 1.48.  Correction of inventorship in a patent application, 
other than a reissue application. 

*****

(e)	If a person or persons were named as an inventor or inventors in 
a provisional application through error without any deceptive intention on 
the part of such person or persons, an amendment may be filed in the pro-
visional application deleting the name or names of the person or persons 
who were erroneously named.  Such amendment must be accompanied by:

(1)	A petition including a statement by the person or persons 
whose name or names are being deleted that the inventorship error 
occurred without deceptive intention on the part of such person or persons;

(2)	The fee set forth in ? 1.17(q); and

(3)	If an assignment has been executed by any of the original 
named inventors, the written consent of the assignee (see ? 3.73(b)).

*****

  37 CFR 1.48(e) provides a procedure for deleting the 
name of a person who was erroneously named as an inven-
tor in a provisional application.  Under  35 U.S.C. 119(e), 
as contained in Public Law 103 - 465, a later filed applica-
tion under  35 U.S.C. 111(a) may claim priority benefits 
based on a copending provisional application so long as the 
applications have at least one inventor in common.  An 
error in naming a person as an inventor in a provisional 
application would not require correction by deleting the 
erroneously named inventor from the provisional applica-
tion since this would have no effect upon the ability of the 
provisional application to serve as a basis for a priority 
claim under  35 U.S.C. 119(e).  However, if applicant 
chooses to correct the inventive entity of a provisional 
application,  37 CFR 1.48(e) sets forth the procedures for 
deleting the name of a person erroneously named as an 
inventor in a provisional application. 

37 CFR 1.48(e) requires that the amendment be accom-
panied by:  (1) a petition including a statement of lack of 
deceptive intent  by the person whose name is being deleted 
establishing that the error occurred without deceptive inten-
tion on his or her part; (2) the fee set forth in  37 CFR 
1.17(q); and (3) the written consent of any assignee.

37 CFR 1.48(f)

37 CFR 1.48.  Correction of inventorship in a patent application, 
other than a reissue application. 

*****

(f)(1)	If the correct inventor or inventors are not named on filing a 
nonprovisional application under ? 1.53(b) without an executed oath or 
declaration under ? 1.63, the later submission of an executed oath or dec-
laration under ? 1.63 during the pendency of the application will act to 
correct the earlier identification of inventorship.

(2)	If the correct inventor or inventors are not named on filing a 
provisional application without a cover sheet under ? 1.51(c)(1), the later 
submission of a cover sheet under ? 1.51(c)(1) during the pendency of the 
application will act to correct the earlier identification of inventorship.

*****

37 CFR 1.48(f)(1) and (f)(2) will act to automatically 
correct an earlier identification of inventorship in a nonpro-
visional application by the filing of an initial executed oath 
or declaration and in a provisional application by the filing 
of an initial cover sheet.  A petition and fee is not required 
for the inventorship correction to occur.

37 CFR 1.48(f)(1) is not applicable for national stage 
applications filed under  35 U.S.C. 371 where the inventor-
ship has been erroneously named in the international appli-
cation.  Accordingly, if the inventorship set forth in the oath 
or declaration filed in the national stage application differs 
from the inventorship specified in the international applica-
tion, the oath or declaration must be accompanied by a peti-
tion under  37 CFR 1.48(a).

37 CFR 1.48(g)

37 CFR 1.48.  Correction of inventorship in a patent application, 
other than a reissue application. 

*****

(g)	The Office may require such other information as may be 
deemed appropriate under the particular circumstances surrounding the 
correction of inventorship.

201.04	Parent Application 

The term "parent" is applied to an earlier application of 
an inventor disclosing a given invention. Such invention 
may or may not be claimed in the first application.  Benefit 
of the filing date of copending parent application may be 
claimed under  35 U.S.C. 120. The term parent will not be 
used to describe a provisional application.

201.04(a)	Original Application

"Original" is used in the patent statute and rules to refer 
to an application which is not a reissue application.  An 
original application may be a first filing or a continuing 
application.

201.04(b)	Provisional Application [R-1]

35 U.S.C. 111.  Application.

*****

**>

(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 applica-
tion.

(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 1.9.  Definitions.

(a)(1)	A national application as used in this chapter means a U.S. 
application for patent which was either filed in the Office under  35 U.S.C. 
111, or which entered the national stage from an international application 
after compliance with  35 U.S.C. 371.

(2)	A provisional application as used in this chapter means a 
U.S. national application for patent filed in the Office under  35 U.S.C. 
111(b).

(3)	A nonprovisional application as used in this chapter means a 
U.S. national application for patent which was either filed in the Office 
under  35 U.S.C. 111(a), or which entered the national stage from an inter-
national application after compliance with  35 U.S.C. 371.

*****

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

*****

(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.

*****

One of the provisions of the Uruguay Round Agree-
ments Act which is effective as of June 8, 1995, is the 
establishment of a domestic priority system. The Act pro-
vides a mechanism to enable domestic applicants to quickly 
and inexpensively file provisional applications.  Under the 
provisions of  35 U.S.C. 119(e), applicants are entitled to 
claim the benefit of priority in a given application in the 
United States. The domestic priority period will not count 
in the measurement of the 20-year patent term.  See  35 
U.S.C. 154(a)(3). Thus, domestic applicants are placed on 
equal footing with foreign applicants with respect to the 
patent term.

The parts of a provisional application that are required 
are set forth in  37 CFR 1.51(c) and  MPEP ? 601.01 and  ? 
601.01(b). The filing date of a provisional application is the 
date on which (1) a specification which complies with  35 
U.S.C. 112, first paragraph, and (2) any drawing required 
by  37 CFR 1.81(a) are filed. A provisional application 
must also include a cover sheet or cover letter identifying 
the application as a provisional application. Otherwise, the 
application will be treated as an application filed under  37 
CFR 1.53(b). The filing fee is set forth in  37 CFR 1.16(k). 

NOTE:

(A)	No claim is required in a provisional application.

(B)	No oath or declaration is required in a provisional 
application.

(C)	Provisional applications will not be examined for 
patentability, placed in an interference, or made the subject 
of a statutory invention registration.

** >A provisional application will automatically be 
abandoned 12 months after its filing date and will not be 
subject to revival to restore it to pending status thereafter. 
See 35 U.S.C. 111(b)(5). Public Law 106-113 amended 
35 U.S.C. 119(e)(3) to extend the period of pendency of a 
provisional application to the next succeeding business day 
if the day that is 12 months after the filing date of a provi-
sional application falls on a Saturday, Sunday, or Federal 
holiday within the District of Columbia. 35 U.S.C.  
119(e)(3) as amended by Public Law 106-113 is effective 
as of November 29, 1999 and applies to any provisional 
applications filed on or after June 8, 1995 but has no effect 
on any patent which is the subject of litigation in an action 
commenced before November 29, 1999. 

For example, if a provisional application was filed on 
January 15, 1999, the last day of pendency of the provi-
sional application under 35 U.S.C. 111(b)(5) and 35 U.S.C.  
119(e)(3) is extended to January 18, 2000 (January 15, 
2000 is a Saturday and Monday, January 17, 2000 is a Fed-
eral holiday and therefore, the next succeeding business 
day is Tuesday, January 18, 2000). A nonprovisional appli-
cation claiming the benefit of the provisional application 
must be filed no later than January 18, 2000.<

A provisional application is not entitled to claim priority 
benefits based on any other application under 35 U.S.C. 
119, 120, 121, or 365.

An application filed under 37 CFR 1.53(b) may be con-
verted to a provisional application provided a petition 
requesting the conversion is submitted along with the fee as 
set forth in 37 CFR 1.17(q). The petition and fee must be 
submitted prior to the earlier of the abandonment of the 
nonprovisional application, the payment of the issue fee, 
the expiration of 12 months after the filing date of the non-
provisional application, or the filing of a request for statu-
tory invention registration. 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 37 CFR 1.53(b).

>Public Law 106-113 amended 35 U.S.C. 111(b)(5) to 
permit a provisional application filed under 37 CFR  
1.53(c) be converted to a nonprovisional application filed 
under 37 CFR 1.53(b). 35 U.S.C. 111(b)(5) as amended by 
Public Law 106-113 is effective as of November 29, 1999 
and applies to any provisional applications filed on or after 
June 8, 1995.<         

Design applications may not make a claim for priority of 
a provisional application under 37 CFR 1.78(a)(3).

Form PTO/SB/16. Provisional Application for Patent Cover Sheet

201.05	Reissue Application

A reissue application is an application for a patent to 
take the place of an unexpired patent that is defective in 
some one or more particulars. A detailed treatment of reis-
sues will be found in  Chapter 1400.

201.06	Division Application

A later application for an independent or distinct inven-
tion, carved out of a pending application and disclosing and 
claiming only subject matter disclosed in the earlier or par-
ent application, is known as a divisional application or 
"division." It may be filed pursuant to  37 CFR 1.53(b) or 
1.53(d). 37 CFR 1.60 and 1.62 have been deleted as of 
December 1, 1997.  The practices set forth in former  37 
CFR 1.60 and former 1.62 have been incorporated into  37 
CFR 1.53(b) and 1.53(d), respectively.  Continued prosecu-
tion application (CPA) practice set forth in  37 CFR 1.53(d) 
has replaced the file wrapper continuing (FWC) practice set 
forth in former  37 CFR 1.62.  Therefore, divisional appli-
cations previously filed under  37 CFR 1.60 or 1.62 should 
now be filed under  37 CFR 1.53(b) or 1.53(d).  Both  the 
parent and divisional applications must have at least one 
common applicant. The divisional application should set 
forth only that portion of the earlier disclosure which is ger-
mane to the invention as claimed in the divisional applica-
tion. An application claiming the benefits of a provisional 
application under  35 U.S.C. 119(e) should not be called a 
"division" of the provisional application since the applica-
tion will have its patent term calculated from its filing date, 
whereas an application filed under  35 U.S.C. 120, 121, or 
365(c) will have its patent term calculated from the date on 
which the earliest application was filed, provided a specific 
reference is made to the earlier filed application(s).  35 
U.S.C. 154(a)(2) and (a)(3).

In the interest of expediting the processing of newly filed 
divisional applications, filed as a result of a restriction 
requirement, applicants are requested to include the appro-
priate Patent and Trademark Office classification of the 
divisional application and the status and location of the par-
ent application, on the papers submitted.  The appropriate 
classification for the divisional application may be found in 
the Office communication of the parent application 
wherein the requirement was made. It is suggested that this 
classification designation be placed in the upper right hand 
corner of the letter of transmittal accompanying these divi-
sional applications.

Use Form Paragraph 2.01 to remind applicant of possi-
ble division status. 

?  2.01 Definition of Division

This application appears to be a division of Application No. [1], filed 
[2].  A later application for a distinct or independent invention, carved out 
of a pending application and disclosing and claiming only subject matter 
disclosed in the earlier or parent application, is known as a divisional 
application or  "division."  The divisional application should set forth only 
that portion of the earlier disclosure which is germane to the invention as 
claimed in the divisional application.

Examiner Note:

1.	In bracket 1, insert the Application No.(series code and serial no.) of 
the parent application.

2.	In bracket 2, insert the filing date of the parent application.

3.	An application claiming the benefits of a provisional application 
under  35 U.S.C. 119(e) should not be called a "division" of the provi-
sional application since the application will have its patent term calculated 
from its filing date, whereas an application filed under  35 U.S.C. 120, 
121, or 365(c) will have its term calculated from the date on which the ear-
liest application was filed, provided a specific reference is made to the ear-
lier filed application(s),  35 U.S.C. 154(a)(2) and (a)(3).

A design application may be considered to be a division 
of a utility application (but not of a provisional applica-
tion), and is entitled to the filing date thereof if the draw-
ings of the earlier filed utility application show the same 
article as that in the design application sufficiently to com-
ply with  35 U.S.C. 112, first paragraph. However, such a 
divisional design application may only be filed under the 
procedure set forth in  37 CFR 1.53(b) not under  37 CFR 
1.53(d).  Note that  37 CFR 1.60 and  37 CFR 1.62 have 
been deleted as of December 1, 1997.  See  MPEP ? 
1504.20.

While a divisional application may depart from the 
phraseology used in the parent application there may be no 
departure therefrom in substance or variation in the disclo-
sure that would amount to "new matter" if introduced by 
amendment into the parent application.  Compare  MPEP ? 
201.08 and  ? 201.11.

For notation to be put on the file wrapper by the exam-
iner in the case of a divisional application, see  MPEP ? 
202.02.

201.06(a)	Former 37 CFR 1.60 Divisional-
Continuation Procedure

[Note: 37 CFR 1.60 was deleted effective December 1, 
1997.  See 1203 O.G. 63, October 21, 1997.  A continua-
tion or divisional application filed under  37 CFR 1.60 
on or after December 1, 1997, will automatically be 
treated as an application filed under  37 CFR 1.53(b).  
All continuation and divisional applications filed under  
37 CFR 1.60 prior to December 1, 1997 will continue to 
be processed and examined under the procedures set 
forth in former  37 CFR 1.60.  Thus, the following dis-
cussion of divisional-continuation practice under 
former  37 CFR 1.60 is being retained in the MPEP and 
all references to the rules in this section are directed to 
the rules that were in effect prior to December 1, 1997.]

37 CFR 1.60.  Continuation or divisional application for 
invention disclosed in a prior nonprovisional application

(a)	[Reserved]

(b)	An applicant may omit signing of the oath or declaration in a 
continuation or divisional application (filed under the conditions specified 
in 35 U.S.C.120 or 121 and ? 1.78(a)) if: 

(1)	the prior application was a nonprovisional application and a 
complete application as set forth in ? 1.51(a)(1); 

(2)	applicant indicates that the application is being filed pursu-
ant to this section and files a true copy of the prior complete application as 
filed including the specification (with claims), drawings, oath or declara-
tion showing the signature or an indication it was signed, and any amend-
ments referred to in the oath or declaration filed to complete the prior 
application; 

(3)	the inventors named in the continuation or divisional appli-
cation are the same or less than all the inventors named in the prior appli-
cation; and 

(4)	the application is filed before the patenting, or abandonment 
of, or termination of proceedings on the prior application. The copy of the 
prior application must be accompanied by a statement that the application 
papers filed are a true copy of the prior complete application. Such state-
ment must be by the applicant or applicant's attorney or agent and must be 
a verified statement if made by a person not registered to practice before 
the Patent and Trademark Office. Only amendments reducing the number 
of claims or adding a reference to the prior application (? 1.78(a)) will be 
entered before calculating the filing fee and granting the filing date. If the 
continuation or divisional application is filed by less than all the inventors 
named in the prior application, a statement must accompany the applica-
tion when filed requesting deletion of the names of the person or persons 
who are not inventors of the invention being claimed in the continuation or 
divisional application. Except as provided in paragraph (d) of this section, 
if a true copy of the prior application as filed is not filed with the applica-
tion or if the statement that the application papers are a true copy is omit-
ted, the application will not be given a filing date earlier than the date 
upon which the copy and statement are filed, unless a petition with the fee 
set forth in ? 1.17(i) is filed which satisfactorily explains the delay in fil-
ing these items.

(c)	If an application filed pursuant to paragraph (b) of this section is 
incomplete for reasons other than those specified in paragraph (d) of this 
section, applicant will be notified and given a time period within which to 
complete the application in order to obtain a filing date as of the date of 
filing the omitted item provided the omitted item is filed before patenting 
or abandonment of or termination of proceedings on the prior application.  
If the omission is not corrected within the time period set, the application 
will be returned or otherwise disposed of; the fee, if submitted, will be 
refunded less the handling fee set forth in ? 1.21(n).

(d)	If an application filed pursuant to paragraph (b) of this section is 
otherwise complete, but does not include the appropriate filing fee or a 
true copy of the oath or declaration from the prior complete application, 
showing the signature or an indication it was signed, a filing date will be 
granted and applicant will be so notified and given a period of time within 
which to file the fee, or the true copy of the oath or declaration and to pay 
the surcharge as set forth in ? 1.16(e) in order to prevent abandonment of 
the application. The notification pursuant to this paragraph may be made 
simultaneously with any notification pursuant to paragraph(c) of this sec-
tion.

37 CFR 1.60 PRACTICE

The  37 CFR 1.60 practice was developed to provide a 
procedure for filing a continuation or divisional application 
where hardships existed in obtaining the signature of the 
inventor on such an application during the pendency of the 
prior nonprovisional application. It is suggested that the use 
of the  37 CFR 1.60 practice be limited to such instances in 
view of the additional work required by the Office to enter 
preliminary amendments. If no hardship exists in obtaining 
the signature of the inventor, the application should be filed 
under  37 CFR 1.53(b)(1) not under  37 CFR 1.60. It is 
pointed out that a continuation or divisional application 
may be filed under  37 CFR 1.53(b)(1),  37 CFR 1.60, or  
37 CFR 1.62.  37 CFR 1.60 or  37 CFR 1.62 practice may 
not be used when filing an application where the immediate 
prior application was a provisional application under  35 
U.S.C. 119(e).

37 CFR 1.60 practice permits persons having authority 
to prosecute a prior copending nonprovisional application 
to file a continuation or divisional application without 
requiring the inventor to again execute an oath or declara-
tion under  35 U.S.C. 115, if the continuation or divisional 
application is an exact copy of the prior nonprovisional 
application as executed and filed. It is not necessary to file 
a new oath or declaration which includes a reference to the 
nonfiling of an application for an inventor's certificate in  
37 CFR 1.60 applications filed after May 1, 1975. Like-
wise, it is not necessary to have the inventor sign a new 
oath or declaration merely to include a reference to the duty 
of disclosure if the parent application was filed prior to Jan-
uary 1, 1978, or to indicate that the inventor has reviewed 
and understands the contents of the application if the parent 
application was filed prior to October 1, 1983.

Where the immediate prior nonprovisional application 
was not signed (for example, where it was filed under the 
former  37 CFR 1.147 or current  37 CFR 1.60 or  37 CFR 
1.62 practice), a copy of the most recent nonprovisional 
application having a signed oath or declaration in the chain 
of copending prior nonprovisional applications under  35 
U.S.C. 120 must be used.

The basic concept of  37 CFR 1.60 practice is that since 
the inventor has already made the affirmation required by  
35 U.S.C. 115, it is not necessary to make another affirma-
tion in a later application that discloses and claims only the 
same subject matter. It is for this reason that a  37 CFR 1.60 
application must be an exact duplicate of an earlier nonpro-
visional application executed by the inventor. It is permissi-
ble to retype pages to provide clean copies.

37 CFR 1.60 APPLICATION CONTENT 

As mentioned previously, a  37 CFR 1.60 application 
must consist of a copy of an executed nonprovisional appli-
cation as filed (specification, claims, drawings, and oath or 
declaration). The application must also include a clear indi-
cation that a filing under  37 CFR 1.60 is desired. The use 
of transmittal form PTO/SB/13 is urged since it acts as a 
checklist for both applicant and the Office and includes a 
specific request for an application under  37 CFR 1.60. If 
an application is filed under  37 CFR 1.60, all requirements 
of that rule must be met.

Although a copy of all original claims in the prior non-
provisional application must appear in the  37 CFR 1.60 
application, some of the claims may be canceled by request 
in the  37 CFR 1.60 application in order to reduce the filing 
fee (see form PTO/SB/13, item 5).  Any preliminary 
amendment presenting additional claims (claims not in the 
prior application as filed) should accompany the request for 
filing an application under  37 CFR 1.60, but such an 
amendment will not be entered until after the filing date has 
been granted. Any claims added by amendment should be 
numbered consecutively beginning with the number next 
following the highest numbered original claim in the prior 
executed nonprovisional application. The Office of Initial 
Patent Examination should not review preliminary amend-
ments (in the transmitted letter or separate paper accompa-
nying the application) for evidence of missing claims in 
applications filed under  37 CFR 1.60.  Any errors in the 
numbering of claims in preliminary amendment(s) can be 
corrected in the examining groups. Amendments made in 
the prior nonprovisional application do not carry over into 
the  37 CFR 1.60 application. Any preliminary amendment 
should accompany the  37 CFR 1.60 application and be 
directed to "the accompanying  37 CFR 1.60 application" 
and not to the prior nonprovisional application. Applicants 
should submit preliminary amendments on filing or 
promptly thereafter to assure examiner consideration when 
the  37 CFR 1.60 application is picked up for examination.  

All application copies must comply with  37 CFR 1.52 
and must be on paper which permits entry of amendments 
thereon in ink.  

A copy of the nonprovisional application must be pre-
pared and submitted by the applicant, or his or her attorney 
or agent, and include a statement that it is a true copy. The 
copy of the oath or declaration need not show a copy of the 
inventor's or notary's signature provided that all other data 
is shown and an indication is made on the oath or declara-
tion that the oath or declaration has been signed. For exam-
ple, if the inventor's or notary's signature is not shown on 
the copy of the oath or declaration, the notation "/s/" may 
be added to the copy of the oath or declaration on the line 
provided for the signature to indicate that the original oath 
or declaration was signed.  

In order to obtain a filing date under  37 CFR 1.60 a 
copy of all pages of the application, including description, 
claims, any drawings, and the statement that the application 
papers are a true copy of the prior application are required 
to be submitted. If all these items are not submitted, remedy 
is by way of petition under  37 CFR 1.60(b) and payment of 
the fee under  37 CFR 1.17(i). Paragraph (d) of  37 CFR 
1.60 which was added effective Jan. 4, 1993, provides for 
the filing fee and/or true copy of the oath or declaration 
from the prior nonprovisional application to be filed on a 
date later than the filing date with payment of the surcharge 
set forth in  37 CFR 1.16(e).

Claims for priority rights under  35 U.S.C. 119(a)-(d) 
must be made in  37 CFR 1.60 applications if it is desired to 
have the foreign priority data appear on the issued patent. 
In re Van Esdonk, 187 USPQ 671 (Comm'r Pat. 1975). Ref-
erence should be made to certified copies filed in a prior 
application if reliance thereon is made. 

If the claims presented by amendment in a  37 CFR 1.60 
application are directed to matter shown and described in 
the prior nonprovisional application but not substantially 
embraced in the statement of invention or claims originally 
presented, the applicant should file a supplemental oath or 
declaration under  37 CFR 1.67 as promptly as possible. 

In view of the fact that  37 CFR 1.60 applications are 
limited to continuations and divisions, no new matter may 
be introduced in a  37 CFR 1.60 application,  35 U.S.C. 
132. Continuation-in-part applications may only be filed 
under  37 CFR 1.53(b)(1) or  37 CFR 1.62.  

A statement to the effect that the submitted copy is 
believed to be a true copy of the prior nonprovisional appli-
cation as filed to the best of his or her information and 
belief is sufficient, if an explanation is made as to why the 
statement must be based only on belief.

If the  37 CFR 1.60 application is being filed by less than 
all the inventors named in the prior nonprovisional applica-
tion, a statement must accompany the application, when it 
is filed, requesting deletion of the names of the person or 
persons who are not inventors of the invention being 
claimed in the  37 CFR 1.60 application. For example, this 
situation could occur when a divisional application is being 
filed directed to one of the inventions disclosed and 
claimed in the prior nonprovisional application. No petition 
under  37 CFR 1.48 for correction of inventorship is 
required when filing under  37 CFR 1.60 unless there was 
an error in the omission of a named inventor in the prior 
nonprovisional application which was not corrected prior to 
the filing of the  37 CFR 1.60 application.  

If the inventorship shown on the original oath or declara-
tion has been changed and approved during the prosecution 
of the prior nonprovisional application, the  37 CFR 1.60 
application papers must indicate such a change has been 
made and approved by providing a copy of the petition for 
correction of inventorship under  37 CFR 1.48 in order that 
the changed inventorship may be indicated in the  37 CFR 
1.60 application. The  37 CFR 1.60 application papers 
should also include any additions or changes in an inven-
tor's citizenship, residence or post office address made and 
approved in the prior nonprovisional application.

If small entity status has been established in a parent 
application, it is not necessary to again file a statement 
under  37 CFR 1.27 if the small entity status is desired in a  
37 CFR 1.60 application. The  37 CFR 1.60 application 
must, however, include a reference to the statement in the 
parent application if the small entity, status is still proper 
and desired (37 CFR 1.28(a)). 

If the parent application was filed by other than the 
inventor under  37 CFR 1.47, a copy of all the petition 
papers filed under  37 CFR 1.47 must also be filed.

FORMAL DRAWINGS REQUIRED

Formal drawings are required in  37 CFR 1.60 applica-
tions as in other applications. A request to transfer draw-
ings from a prior nonprovisional application does not 
relieve the applicant from the obligation to file a copy of 
the drawings originally filed in the prior nonprovisional 
application. If informal drawings are filed with the applica-
tion papers, the examiner should use Form Paragraph 2.02 
for formal drawing requirement.

?  2.02 Former 37 CFR 1.60, Drawing Requirement

 This application, filed under former  37 CFR 1.60, lacks formal draw-
ings. The informal drawings filed in this application are acceptable for 
examination purposes.  When the application is allowed, applicant will be 
required to submit new formal drawings.  In unusual circumstances, the 
formal drawings from the abandoned parent application may be trans-
ferred by the grant of a petition under  37 CFR 1.182.

Examiner Note:

This form paragraph is to be used only when the parent application 
contains approved formal drawings and has been abandoned.

Any drawing corrections requested but not made in the 
prior nonprovisional application should be repeated in the  
37 CFR 1.60 application if such changes are still desired. 

Use Form Paragraph 2.04 for instructions to applicant 
where drawing corrections have been requested in the par-
ent application.

?  2.04 Correction of Drawings in Former 37 CFR 1.60 Cases

The drawings in this application are objected to by the Draftsperson as 
informal.  Any drawing corrections requested, but not made in the prior 
application, should be repeated in this application if such changes are still 
desired.  If the drawings were changed and approved during the prosecu-
tion of the prior application, a petition may be filed under  37 CFR 1.182 
requesting the transfer of such drawings, provided the parent application 
has been abandoned.  However, a copy of the drawings as originally filed 
must be included in the  37 CFR 1.60 application papers to indicate the 
original content.

Examiner Note:

Use form paragraphs 6.39 and 6.40 with this paragraph.

COPIES OF AFFIDAVITS

Affidavits and declarations, such as those under  37 CFR 
1.131 and  37 CFR 1.132 filed during the prosecution of the 
prior nonprovisional application do not automatically 
become a part of the  37 CFR 1.60 application. Where it is 
desired to rely on an earlier filed affidavit, the applicant 
should make such remarks of record in the  37 CFR 1.60 
application and include a copy of the original affidavit filed 
in the prior nonprovisional application.

Use Form Paragraph 2.03 for instructions to applicant 
concerning affidavits and declarations in the parent applica-
tion.

?  2.03 Affidavits or Declarations in Parent Application

Applicant refers to an affidavit or declaration filed in the parent appli-
cation.  Affidavits or declarations, such as those submitted under  37 CFR 
1.131 and  37 CFR 1.132, filed during the prosecution of the parent appli-
cation do not automatically become a part of this application.  Where it is 
desired to rely on an earlier filed affidavit or declaration, the applicant 
should make the remarks of record in the later application and include a 
copy of the original affidavit or declaration filed in the parent application.

Examiner Note:

This form paragraph is to be used in applications filed under  37 CFR 
1.53(b) and former  37 CFR 1.60.  Do not use this paragraph in applica-
tions filed under  37 CFR 1.53(d) and former  37 CFR 1.62 applications, 
since affidavits and/or declarations, such as those submitted under  37 
CFR 1.131 and  37 CFR 1.132 filed during the prosecution of the parent 
nonprovisional application automatically become a part of the  37 CFR 
1.53(d) and former  37 CFR 1.62 applications.

ABANDONMENT OF THE PRIOR NONPROVI-
SIONAL APPLICATION

Under  37 CFR 1.60 practice the prior nonprovisional 
application is not automatically abandoned upon filing of 
the  37 CFR 1.60 application. If the prior nonprovisional 
application is to be expressly abandoned, such a paper must 
be signed in accordance with  37 CFR 1.138. A registered 
attorney or agent not of record acting in a representative 
capacity under  37 CFR 1.34(a) may also expressly aban-
don a prior nonprovisional application as of the filing date 
granted to a continuing application when filing such a con-
tinuing application.

If the prior nonprovisional application which is to be 
expressly abandoned has a notice of allowance issued 
therein, the prior nonprovisional application can become 
abandoned by the nonpayment of the issue fee. However, 
once an issue fee has been paid in the prior application, 
even if the payment occurs following the filing of a contin-
uation application under  37 CFR 1.60, a petition to with-
draw the prior nonprovisional application from issue must 
be filed before the prior nonprovisional application can be 
abandoned (37 CFR 1.313).

If the prior nonprovisional application which is to be 
expressly abandoned is before the Board of Patent Appeals 
and Interferences, a separate notice should be forwarded by 
the applicant to such Board, giving notice thereof.

After a decision by the Court of Appeals for the Federal 
Circuit (CAFC) in which the rejection of all claims is 
affirmed, proceedings are terminated on the date of receipt 
of the Court's certified copy of the decision by the Patent 
and Trademark Office. Continental Can Company, Inc., v. 
Schuyler, 168 USPQ 625 (D.D.C. 1970).  See  MPEP ? 
1216.01.

EXAMINATION

The practice relating to making first action rejections 
final applies also to  37 CFR 1.60 applications.  See  MPEP 
? 706.07(b).

Any preliminary amendment filed with a  37 CFR 1.60 
application which is to be entered after granting of the fil-
ing date should be entered by the technical support staff of 
the examining group where the application is finally 
assigned to be examined. Any errors in the numbering of 
claims in preliminary amendment(s) can be corrected in the 
examining groups. Accordingly, these applications should 
be classified and assigned to the proper examining group 
by taking into consideration the claims that will be before 
the examiner upon entry of such a preliminary amendment.

If the examiner finds that a filing date has been granted 
erroneously because the application was incomplete, e.g., 
pages of specification missing or drawing sheets missing, 
the application should be returned to the Office of Initial 
Patent Examination (OIPE) via the Office of Petitions.

Form PTO/SB/13 is designed as an aid for use by both 
applicant and the Patent and Trademark Office and should 
simplify filing and processing of applications under  37 
CFR 1.60.

Form PTO/SB/13 Request For Filing A Patent Application Under 37 CFR 1.60.

201.06(b)	Former 37 CFR 1.62 File 
Wrapper Continuing Procedure 

[Note: 37 CFR 1.62 was deleted effective December 1, 
1997.  See 1203 O.G. 63, October 21, 1997.  A continua-
tion or divisional application filed under former  37 
CFR 1.62 on or after December 1, 1997, will be treated 
as an application filed under  37 CFR 1.53(d).  If the 
application filed on or after December 1, 1997, under 
former  37 CFR 1.62 is a continuation-in-part (CIP) 
application, the application will be treated as an 
improper application.  In which case, the applicant will 
be notified and given an opportunity to file a petition 
under  37 CFR 1.53(e) to have the application converted 
to an application filed under  37 CFR 1.53(b).

A petition under  37 CFR 1.53(e) to accept and 
treat an improper application filed under former  37 
CFR 1.62 as a proper application filed under  37 CFR 
1.53(b) must include:  (1) the $130.00 petition fee; (2) a 
true copy of the complete nonprovisional application, as 
filed, designated as the prior nonprovisional application 
in the application papers filed under former  37 CFR 
1.62; (3) any amendments entered in the prior nonpro-
visional application; (4) any amendments submitted but 
not entered in the prior nonprovisional application and 
directed to be entered in the application papers filed 
under former  37 CFR 1.62; and (5) an executed oath or 
declaration under  37 CFR 1.63, if one has not already 
been submitted with the application papers filed under 
former  37 CFR 1.62.

All continuation, divisional and CIP applications 
filed under former  37 CFR 1.62 prior to December 1, 
1997, will continue to be processed and examined under 
the procedures set forth in former  37 CFR 1.62.  Thus, 
the following discussion of former  37 CFR 1.62 practice 
is being retained in the MPEP and all references to the 
rules in this section are directed to the rules that were in 
effect prior to December 1, 1997.]

37 CFR 1.62.  File wrapper continuing procedure

(a)	A continuation, continuation-in-part, or divisional application, 
which uses the specification, drawings and oath or declaration from a prior 
nonprovisional application which is complete as defined by ? 1.51(a)(1), 
and which is to be abandoned, may be filed under this section before the 
payment of the issue fee, abandonment of, or termination of proceedings 
on the prior application, or after payment of the issue fee if a petition 
under ? 1.313(b)(5) is granted in the prior application. The filing date of 
an application filed under this section is the date on which a request is 
filed for an application under this section including identification of the 
application number and the names of the inventors named in the prior 
complete application. If the continuation, continuation-in-part, or divi-
sional application is filed by less than all the inventors named in the prior 
application a statement must accompany the application when filed 
requesting deletion of the names of the person or persons who are not 
inventors of the invention being claimed in the continuation, continuation-
in-part, or divisional application.

(b)	The filing fee for a continuation, continuation-in-part, or divi-
sional application under this section is based on the number of claims 
remaining in the application after entry of any preliminary amendment and 
entry of any amendments under ? 1.116 unentered in the prior application 
which applicant has requested to be entered in the continuing application.

(c)	In the case of a continuation-in-part application which adds and 
claims additional disclosure by amendment, an oath or declaration as 
required by ? 1.63 must also be filed. In those situations where a new oath 
or declaration is required due to additional subject matter being claimed, 
additional inventors may be named in the continuing application. In a con-
tinuation or divisional application which discloses and claims only subject 
matter disclosed in a prior application, no additional oath or declaration is 
required and the application must name as inventors the same or less than 
all the inventors named in the prior application.

(d)	If an application which has been accorded a filing date pursuant 
to paragraph (a) of this section does not include the appropriate basic fil-
ing fee pursuant to paragraph (b) of this section, or an oath or declaration 
by the applicant in the case of a continuation-in-part application pursuant 
to paragraph (c) of this section, applicant will be so notified and given a 
period of time within which to file the fee, oath, or declaration and to pay 
the surcharge as set forth in ? 1.16(e) in order to prevent abandonment of 
the application. The notification pursuant to this paragraph may be made 
simultaneously with any notification of a defect pursuant to paragraph (a) 
of this section. 

(e)	An application filed under this section will utilize the file wrap-
per and contents of the prior application to constitute the new continua-
tion, continuation-in-part, or divisional application but will be assigned a 
new application number. Changes to the prior application must be made in 
the form of an amendment to the prior application as it exists at the time of 
filing the application under this section. No copy of the prior application 
or new specification is required. The filing of such a copy or specification 
will be considered improper, and a filing date as of the date of deposit of 
the request for an application under this section will not be granted to the 
application unless a petition with the fee set forth in ? 1.17(i) is filed with 
instructions to cancel the copy or specification.

(f)	The filing of an application under this section will be construed 
to include a waiver of confidence by the applicant under  35 U.S.C. 122 to 
the extent that any member of the public who is entitled under the provi-
sions of  37 CFR 1.14 to access to, or information concerning either the 
prior application or any continuing application filed under the provisions 
of this section may be given similar access to, or similar information con-
cerning, the other application(s) in the file wrapper.

(g)	The filing of a request for a continuing application under this 
section will be considered to be a request to expressly abandon the prior 
application as of the filing date granted the continuing application.

(h)	The applicant is urged to furnish the following information 
relating to the prior and continuing applications to the best of his or her 
ability: 

(1)	Title as originally filed and as last amended;

(2)	Name of applicant as originally filed and as last amended;

(3)	Current correspondence address of applicant;

(4)	Identification of prior foreign application and any priority 
claim under  35 U.S.C. 119.

(5)	The title of the invention and names of the applicants to be 
named in the continuing application.

(i)	Envelopes containing only application papers and fees for 
filing under this section should be marked "Box FWC".

(j)	If any application filed under this section is found to be 
improper, the applicant will be notified and given a time period within 
which to correct the filing error in order to obtain a filing date as of the 
date the filing error is corrected provided the correction is made before the 
payment of the issue fee, abandonment of, or termination of proceedings 
on the prior application. If the filing error is not corrected within the time 
period set, the application will be returned or otherwise disposed of; the 
fee, if submitted, will be refunded less the handling fee set forth in ? 
1.21(n).

An applicant may file a continuation or division of a 
pending patent application by simply filing a request there-
for under  37 CFR 1.62 identifying the Application No. 
(series code and serial number) of the prior complete non-
provisional application and paying the necessary applica-
tion filing fee. The filing of a copy of the prior 
nonprovisional application (required under  37 CFR 1.60) 
is unnecessary and improper under the procedure set forth 
in  37 CFR 1.62. To file a continuation-in-part application, 
an amendment (not a new specification) adding the addi-
tional subject matter and an oath or declaration relating 
thereto are also required.

A request for an FWC application under  37 CFR 1.62 
may be signed by a registered practitioner acting in a repre-
sentative capacity under  37 CFR 1.34(a). However, corre-
spondence concerning the continuing application will be 
sent by the Office to the correspondence address as it 
appears on the prior nonprovisional application until a new 
power of attorney, or change of correspondence address 
signed by an attorney or agent of record in the prior appli-
cation, is filed in the FWC.

The "file wrapper continuing" (FWC) procedure is set 
forth in  37 CFR 1.62. Under this simplified procedure, any 
continuing application such as a continuation, continuation-
in-part, or divisional application may be filed. The papers 
in the copending prior nonprovisional application, which 
application will become automatically expressly aban-
doned will be used and any changes thereto desired when 
filing the FWC application must be made by amendment. 
Under the FWC procedure, a new application number is 
assigned and the specification, drawings, and other papers 
in the parent application file wrapper are used as the papers 
in the continuing application. Changes in inventorship may 
be made. The "file wrapper continuing" (FWC) procedure 
is available for utility, design, plant, and reissue applica-
tions to file continuing applications of the same type (util-
ity, design, plant, reissue) as the parent application. An 
application which claims the benefits of a provisional 
application may not be filed under the provisions of  37 
CFR 1.62. Use of the FWC procedure will automatically 
result in express abandonment of the prior nonprovisional 
application as of the filing date accorded the continuation, 
continuation-in-part, or divisional application. 

The FWC procedure can be used for any continuation, 
continuation-in-part, or divisional application provided the 
applicant wishes the copending prior nonprovisional appli-
cation to become abandoned.  If a continuation or divi-
sional application is desired without abandonment of the 
parent application, the procedure under  37 CFR 1.60 
should be used. Applicant also has the option of filing new 
application papers with a reexecuted oath or declaration 
under  37 CFR 1.53(b)(1).

Under  37 CFR 1.62, the specification, claims, and draw-
ings, and any amendments in the prior nonprovisional 
application are used in the continuation, continuation-in-
part, or divisional application. A new filing fee is required 
in accordance with  35 U.S.C. 41 and  37 CFR 1.16. The 
only other statutory requirement under  35 U.S.C. 111(a) is 
a signed oath or declaration.  Since a continuation or divi-
sional application cannot contain new matter, the oath or 
declaration filed in the prior nonprovisional application 
would supply all the information required under the statute 
and rules to have a complete application and to obtain a fil-
ing date. Accordingly, the previously filed oath or declara-
tion will be considered to be the oath or declaration of the  
37 CFR 1.62 continuation or division. However, if a contin-
uation-in-part application is being filed, or a correction of 
inventorship is being made, then a new oath or declaration 
must be signed and filed by the applicant.

The original disclosure of an application filed under  37 
CFR 1.62 will be the original parent application, amend-
ments entered in the parent application, and amendments 
filed on the filing date and referred to in the oath or declara-
tion by the inventor(s). However, the filing fee will be 
based on the claims in the  37 CFR 1.62 application after 
entry of any unentered amendments under  37 CFR 1.116 in 
the prior application whose entry has been requested by the 
applicant and any preliminary amendment which may 
accompany the FWC request and filing fee. The Certificate 
of Mailing Procedure under  37 CFR 1.8 does not apply to 
filing a request for a "File Wrapper Continuing" application 
since the filing of such a request is considered to be a filing 
of national application papers for the purpose of obtaining 
an application filing date (37 CFR 1.8(a)(i)).

The applicant may file a signed FWC request and the 
regular filing fee under  37 CFR 1.16 and other necessary 
papers with the Patent and Trademark Office, either by mail 
addressed to "Box FWC" or in person with the Customer 
Service Center. An individual check or deposit account 
authorization should accompany each FWC application, 
since combined checks delay processing.

The Mail Center sorts out all "Box FWC" envelopes 
upon receipt and delivers them to a reader for prompt spe-
cial handling. The reader applies the "Mail Room" date 
stamp and marks the categories of the fees. The papers for 
each FWC application are assigned a regular national appli-
cation number and placed in a "Jumbo" size file wrapper. 
The Special Handling Branch reviews the FWC request for 
accuracy and completeness and assigns the filing date if 
everything appears to be in order.  There is no need for any 
processing of the FWC application by the Initial Patent 
Examination Division of the Office of Initial Patent Exami-
nation (OIPE) since there are no papers to be examined and 
the FWC application is routed to the group assigned the 
prior nonprovisional application. When the FWC applica-
tion file wrapper is received in the examining group, the 
parent application is promptly obtained and processed by a 
technical support staff member.

All of the correspondence from the Office in a FWC 
application refers to the FWC application number and fil-
ing date and is processed in the same manner as any other 
continuation, continuation-in-part or divisional application. 
The first action final rejection procedures set forth in  
MPEP ? 706.07(b) apply to FWC applications filed under  
37 CFR 1.62. The PALM system can supply information to 
authorized persons as to the location of the parent applica-
tion file wrapper and ties the parent application number to 
the FWC application number.

The provisions of  37 CFR 1.62 provide that if any appli-
cation in the file wrapper is available to the public that all 
applications in the file wrapper will be available to the pub-
lic.

Paragraph (a) of  37 CFR 1.62 sets forth the minimum 
requirements for obtaining a filing date. Paragraphs (b) and 
(c) of  37 CFR 1.62 set forth the filing fee and oath or dec-
laration requirements. Paragraph 1.62(d) relates to later fil-
ing of the filing fee or oath or declaration as provided for in  
35 U.S.C. 111(a).

EXTENSIONS OF TIME

If an extension of time is necessary to establish continu-
ity between the prior application and the FWC application, 
the petition for extension of time must be filed as a separate 
paper directed to the prior nonprovisional application. A 
general authorization to charge fees to a deposit account 
filed in the FWC application will not be construed as a peti-
tion for extension of time in the prior application.  See In re 
Kokaji, 2 USPQ2d 1309 (Comm'r Pat. 1987). Any petition 
for extension of time directed to the prior application must 
be accompanied by its own certificate of mailing under  37 
CFR 1.8 (if mailed by first class mail (including "Priority 
Mail" and "Express Mail"); see  MPEP ? 512) or should 
have the "Express Mail" mailing label number in accor-
dance with  37 CFR 1.10 (if mailed by "Express Mail"; see  
MPEP ? 513), if the benefits of those rules are desired. For 
the purposes of  37 CFR 1.8(a)(1)(i)(A), first class mail is 
interpreted as including "Express Mail" and "Priority Mail" 
deposited with the USPS.  

CERTIFIED COPY

A certified copy of a continuation-in-part application 
filed under  37 CFR 1.62 will be prepared by the Cer-
tification Branch upon request. The certified copy will con-
sist of a copy of the prior complete application as filed, all 
amendments entered in the prior application as of the FWC 
filing date, any amendment filed with the request for a con-
tinuation-in-part application under  37 CFR 1.62, any unen-
tered amendment under  37 CFR 1.116 in the prior 
application whose entry was requested by the applicant in 
the FWC application, and the oath or declaration under  37 
CFR 1.63 filed to complete the FWC application.

SMALL ENTITY STATUS

If small entity status was established in the parent appli-
cation of an application filed under  37 CFR 1.62, and such 
status is desired and proper in a  37 CFR 1.62 application, it 
is not necessary that a new statement under  37 CFR 1.27 
be filed but rather reference may be made to the statement 
filed in the parent application.

PRIORITY CLAIM 

Claims under  35 U.S.C. 119(a)-(d) and 120 for the ben-
efit of the filing dates of earlier applications in a parent 
application will automatically carry over to an application 
filed under  37 CFR 1.62. Applicants are encouraged to 
repeat and update such claims at the time of filing a  37 
CFR 1.62 application so that such claims will not be over-
looked. A member of the technical support staff should 
check if priority data has been entered on the file wrapper.

Form Paragraph 2.28 may be used to remind applicant to 
insert parent application data.

?  2.28 Reference in Former 37 CFR 1.62 Continuing 
Applications

This application filed under former  37 CFR 1.62 lacks the necessary 
reference to the prior application.  A statement reading "This is a [1] of 
Application No.   [2], filed [3]." should be entered following the title of 
the invention or as the first sentence of the specification.  Also, the current 
status of the nonprovisional parent application(s) should be included.

Examiner Note:

1.	In bracket 1, insert --division--, --continuation--, or --continuation-
in-part--.

2.	Use only in "file wrapper continuing" applications under former  37 
CFR 1.62.

Form PTO/SB/14 is designed as an aid for use by appli-
cant for filing an application under  37 CFR 1.62.

Form PTO/SB/14. Request Form for Filing a Patent Application under 37 CFR 1.62.

201.06(c)	37 CFR 1.53(b) and 37 CFR 
1.63(d) Divisional-Continuation 
Procedure

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

*****

(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.

*****

37 CFR 1.63.  Oath or Declaration.

*****

(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 representa-
tives 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.

*****

IN GENERAL

37 CFR 1.53(b) is the section under which all applica-
tions are filed EXCEPT: (1) an application resulting from 
entry of an international application into the national stage 
under  35 U.S.C. 371 and  37 CFR 1.494 or  37 CFR 1.495; 
(2) a provisional application under  35 U.S.C. 111(b) and  
37 CFR 1.53(c); or (3) a continued prosecution application 
(CPA) under  37 CFR 1.53(d).  Applications submitted 
under  37 CFR 1.53(b), as well as CPAs submitted under  
37 CFR 1.53(d), are applications filed under  35 U.S.C. 
111(a).  An application filed under  37 CFR 1.53(b) may be 
an original, a continuation, a divisional, a continuation-in-
part, or a substitute. (See  MPEP  ? 201.09 for substitute 
application.) The application may be for a "utility" patent 
under  35 U.S.C. 101, a design patent under  35 U.S.C. 171, 
a plant patent under  35 U.S.C. 161, or a reissue under  35 
U.S.C. 251.

37 CFR 1.53(b) is the "default" application.  An applica-
tion that is not (1) the result of the entry of an international 
application into the national stage after compliance with  35 
U.S.C. 371 and  37 CFR 1.494 or  37 CFR 1.495, (2) a pro-
visional application under  37 CFR 1.53(c), or (3) a CPA 
under  37 CFR 1.53(d), is an application filed under  37 
CFR 1.53(b).  An application will be treated as one filed 
under  37 CFR 1.53(b) unless otherwise designated.

In order to be complete for filing date purposes, all 
applications filed under  37 CFR 1.53(b) must include a 
specification as prescribed by  35 U.S.C. 112 containing a 
description pursuant to  37 CFR 1.71 and at least one claim 
pursuant to  37 CFR 1.75, and any drawing required by  37 
CFR 1.81(a).  The statutory filing fee and an oath or decla-
ration in compliance with  37 CFR 1.63 (and  37 CFR 1.175 
(if a reissue) or  37 CFR 1.162 (if for a plant patent)) are 
also required by  37 CFR 1.51(b) for a complete applica-
tion, but the filing fee and oath or declaration may be filed 
after the application filing date upon payment of the sur-
charge set forth in  37 CFR 1.16(e).  See  37 CFR 1.53(f).

Any application filed on or after December 1, 1997, 
which is identified by the applicant as an application filed 
under  37 CFR 1.60 will be processed as an application 
under  37 CFR 1.53(b) (using the copy of the specification, 
drawings and signed oath/declaration filed in the prior 
application supplied by the applicant).  Any submission of 
an application including or relying on a copy of an oath or 
declaration that would have been proper under  37 CFR 
1.60 will be a proper filing under  37 CFR 1.53(b). 

A new application containing a copy of an oath or decla-
ration under  37 CFR 1.63 referring to an attached specifi-
cation is indistinguishable from a continuation or divisional 
application containing a copy of an oath or declaration 
from a prior application submitted pursuant to  37 CFR 
1.63(d).  Unless an application is submitted with a state-
ment that the application is a continuation or divisional 
application, see  37 CFR 1.78(a)(2), the Office will process 
the application as a new non-continuing application.  
Applicants are advised to clearly designate any continua-
tion, divisional, or continuation-in-part application as such 
to avoid the issuance of a filing receipt that does not indi-
cate that the application is a continuation, divisional, or 
continuation-in-part.

OATH/DECLARATION

37 CFR 1.63(d) provides that a newly executed oath or 
declaration is not required in a continuation or divisional 
application filed by all or by fewer than all of the inventors 
named in a prior nonprovisional application containing a 
signed oath or declaration as required by  37 CFR 1.63, 
provided that a copy of the signed oath or declaration filed 
in the prior application is submitted for the continuation or 
divisional application and the specification and drawings 
filed in the continuation or divisional application do not 
contain any subject matter that would have been new mat-
ter in the prior application.  The copy of the oath or declara-
tion must show the signature of the inventor(s) or contain 
an indication thereon that the oath or declaration was 
signed (e.g., the notation "/s/" on the line provided for the 
signature). 

It is not necessary to have the inventor sign a new oath 
or declaration merely to include a reference to the duty of 
disclosure if the parent application was filed prior to Janu-
ary 1, 1978, to indicate that the inventor has reviewed and 
understands the contents of the application if the parent 
application was filed prior to October 1, 1983, or to indi-
cate the inventor's post office address if the parent applica-
tion was filed prior to December 1, 1997, and the inventor's 
post office address is identified elsewhere in the applica-
tion.

When a copy of an oath or declaration from a prior appli-
cation is filed in a continuation or divisional application 
under  37 CFR 1.53(b), special care should be taken by the 
applicant to ensure that the copy is matched with the cor-
rect application file.  Applicant should file the copy of the 
oath or declaration with a cover letter explaining that the 
copy of the oath or declaration is for the attached applica-
tion or for a previously-filed  37 CFR 1.53(b) application 
(identified by application number which consists of a two-
digit series code, e.g  ., 08/, and a six-digit serial number, 
e.g., 123,456).  An adhesive label may be attached to the 
front of the copy of the oath or declaration.  The label 
should clearly state that the copy of the oath or declaration 
is intended for the attached application submitted therewith 
or for Application No. XX/YYY,YYY.  During initial pro-
cessing, attachments (e.g., a cover letter) to application 
papers may be separated.  Therefore, applicant should not 
rely solely upon a cover letter. Note:  37 CFR 1.5(a) states 
that no correspondence relating to an application should be 
filed prior to receipt of the application number information 
from the Patent and Trademark Office.

37 CFR 1.63(d) requires a copy of the signed oath or 
declaration from the prior application.  In instances in 
which the oath or declaration filed in the prior application 
is itself a copy of an oath or declaration from a prior appli-
cation, either a copy of the copy of the oath or declaration 
in the prior application or a direct copy of the original oath 
or declaration is acceptable, as both are a copy of the oath 
or declaration in the prior application, see  37 CFR 
1.4(d)(1)(ii).

The patent statute and rules of practice do not require 
that an oath or declaration include a date of execution, and 
no objection should be made to an oath or declaration 
because it lacks either a recent date of execution or any date 
of execution.  The applicant's duty of candor and good faith 
including compliance with the duty of disclosure require-
ments of  37 CFR 1.56 is continuous and applies to the con-
tinuing application.

A newly executed oath or declaration is required in a 
continuation or divisional application filed under  37 CFR 
1.53(b) naming an inventor not named in the prior applica-
tion, and in a continuation-in-part application.

SPECIFICATION AND DRAWINGS

A continuation or divisional application may be filed 
under  35 U.S.C. 111(a) using the procedures set forth in  
37 CFR 1.53(b), by providing:  (1) a copy of the prior 
application, including a copy of the signed oath or declara-
tion in such prior application, as filed; (2) a new specifica-
tion and drawings and a copy of the signed oath or 
declaration as filed in the prior application provided the 
new specification and drawings do not contain any subject 
matter that would have been new matter in the prior appli-
cation; or (3) a new specification and drawings and a newly 
executed oath or declaration provided the new specification 
and drawings do not contain any subject matter that would 
have been new matter in the prior application.  If a continu-
ation or divisional application filed with a newly executed 
oath or declaration contains subject matter that would have 
been new matter in the prior application, the application 
will have to be amended to indicate that it is a continuation-
in-part application rather than a continuation or a divisional 
application.  The specification and drawings of a continua-
tion or divisional application filed under  37 CFR 1.53(b) 
are not limited to a reproduction or "true copy" of the prior 
application, i.e., the applicant may revise the specification 
for clarity or contextual purposes vis-a-vis the specification 
originally filed in the prior application in the manner that 
an applicant may file a substitute specification, see  37 CFR 
1.125, or amend the drawings of an application so long as it 
does not result in the introduction of new matter.  It is the 
applicant's responsibility to review any new specification 
or drawings submitted for a continuation or divisional 
application under  37 CFR 1.53(b) and  37 CFR 1.63(d) to 
determine that it contains no new matter.  An applicant is 
advised to simply file a continuing application with a newly 
executed oath or declaration when it is questionable as to 
whether the continuing application adds material that 
would have been new matter if presented in the prior appli-
cation.  If one or more claims are allowed in the continua-
tion or divisional application which are directed to matter 
shown and described in the prior nonprovisional applica-
tion but not claimed in the prior application, the applicant 
should be required to file a supplemental oath or declara-
tion under  37 CFR 1.67.

If the examiner determines that new matter is present rel-
ative to the prior application, the examiner should notify 
the applicant in an Office action (preferably the first Office 
action) that a new oath/declaration along with a surcharge 
is required and that the application should be redesignated 
as a continuation-in-part. 

Since the specification and drawings of a continuation or 
divisional application filed under  37 CFR 1.53(b) are not 
limited to a reproduction or "true copy" of the prior appli-
cation, the safeguard in former  37 CFR 1.60(b) concerning 
the filing of an application lacking all of the pages of the 
specification or sheets of drawings of the prior application 
has not been retained in  37 CFR 1.53(b).  Nevertheless, an 
applicant may incorporate by reference the prior applica-
tion by including, in the application-as-filed, a statement 
that such specifically enumerated prior application or appli-
cations are "hereby incorporated herein by reference."  The 
statement may appear in the specification or in the applica-
tion transmittal letter.  The inclusion of this incorporation 
by reference of the prior application(s) will permit an appli-
cant to amend the continuing application to include any 
subject matter in such prior application(s), without the need 
for a petition.

INVENTORSHIP

To continue the practice in former  37 CFR 1.60(b)(4) of 
permitting the filing of a continuation or divisional applica-
tion by all or by fewer than all of the inventors named in a 
prior application without a newly executed oath or declara-
tion,  37 CFR 1.63(d)(2) provides that the copy of the oath 
or declaration submitted for a continuation or divisional 
application under 1.53(b) and  37 CFR 1.63(d) must be 
accompanied by a statement from applicant, applicant's 
representative or other authorized party requesting the dele-
tion of the names of the person or persons who are not 
inventors in the continuation or divisional application.  
Where the continuation or divisional application and a copy 
of the oath or declaration from the prior application are 
filed without a statement from an authorized party request-
ing deletion of the names of any person or persons named 
in the prior application, the continuation or divisional appli-
cation will be treated as naming as inventors the person or 
persons named in the copy of the executed oath or declara-
tion from the prior application.  Accordingly, if a petition 
under  37 CFR 1.48(a) or (c) was granted in the prior appli-
cation, the oath or declaration filed in a continuation or 
divisional application pursuant to  37 CFR 1.53(b) and  37 
CFR 1.63(d) should be a copy of the oath or declaration 
executed by the added inventor(s) filed in the prior applica-
tion. The statement requesting the deletion of the names of 
the person or persons who are not inventors in the continu-
ation or divisional application must be signed by person(s) 
authorized pursuant to  37 CFR 1.33(b) to sign an amend-
ment in the continuation or divisional application. 

A newly signed oath or declaration in compliance with  
37 CFR 1.63 is required where an inventor who was not 
named as an inventor in the signed oath or declaration filed 
in the prior application is to be named in a continuation or 
divisional application filed under  37 CFR 1.53(b). The 
newly signed oath or declaration must be signed by all the 
inventors.

RULE 47 ISSUES

37 CFR 1.63(d)(3) provides for the situation in which 
the executed oath or declaration, of which a copy is submit-
ted for a continuation or divisional application, was origi-
nally filed in a prior application accorded status under  37 
CFR 1.47. 37 CFR 1.63(d)(3)(i) requires a copy of any 
decision granting a petition to accord  37 CFR 1.47 status 
to such application, unless all nonsigning inventor(s) or 
legal representative (pursuant to  37 CFR 1.42 or 1.43) 
have filed an oath or declaration to join in an application of 
which the continuation or divisional application claims a 
benefit under  35 U.S.C. 120, 121 or 365(c).  Where one or 
more, but not all, nonsigning inventor or legal representa-
tive (pursuant to  37 CFR 1.42 or 1.43) subsequently joins 
in any application of which the continuation or divisional 
application claims a benefit under  35 U.S.C. 120, 121 or 
365(c),  37 CFR 1.63(d)(3)(ii) also requires a copy of any 
oath or declaration filed by the inventor or legal representa-
tive who subsequently joined in such application.

New continuation or divisional applications filed under  
37 CFR 1.53(b) which contain a copy of an oath or declara-
tion that is not signed by one of the inventors and a copy of 
the decision according  37 CFR 1.47 status in the prior 
application, should be given a "Rule 47" designation on the 
file wrapper and forwarded by the Office of Initial Patent 
Examination (OIPE) to the Office of Petitions before being 
forwarded to the patent examining groups.  The Office of 
Petitions will inform the nonsigning inventor of the filing 
of the continuation or divisional application and will pub-
lish an announcement in the   Official Gazette.

CHANGE OF ATTORNEY/CORRESPONDENCE 
ADDRESS

37 CFR 1.63(d)(4) provides that 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 authoriza-
tion of agent) or correspondence address must be identified 
in the continuation or divisional application.  Otherwise, 
the Office may not recognize in the continuation or divi-
sional application the change of power of attorney (or 
authorization of agent) or correspondence address which 
occurred during the prosecution of the prior application.

SMALL ENTITY STATUS

If small entity status has been established in a parent 
application and is still proper and desired in a continuation 
or divisional application filed under  37 CFR 1.53(b), it is 
not necessary to file a new statement under  37 CFR 1.27.  
However, the  37 CFR 1.53(b) application must include 
either (a) a reference to the statement filed in the prior 
application or patent to be reissued (payment of the small 
entity basic statutory filing fee will be treated as such a ref-
erence), or (b) a copy of the statement filed in the prior 
application or in the patent to be reissued.  See  37 CFR 
1.28(a)(2).

COPIES OF AFFIDAVITS

 Affidavits or declarations, such as those submitted 
under  37 CFR 1.130, 1.131 and 1.132 filed during the 
prosecution of the prior nonprovisional application do not 
automatically become a part of a continuation or divisional 
application filed under  37 CFR 1.53(b).  Where it is 
desired to rely on an earlier filed affidavit or declaration, 
the applicant should make such remarks of record in the  37 
CFR 1.53(b) application and include a copy of the original 
affidavit or declaration filed in the prior nonprovisional 
application.

Use Form Paragraph 2.03 for instructions to applicant 
concerning affidavits or declarations filed in the parent 
application.

?  2.03 Affidavits or Declarations in Parent Application

Applicant refers to an affidavit or declaration filed in the parent appli-
cation.  Affidavits or declarations, such as those submitted under  37 CFR 
1.131 and  37 CFR 1.132, filed during the prosecution of the parent appli-
cation do not automatically become a part of this application.  Where it is 
desired to rely on an earlier filed affidavit or declaration, the applicant 
should make the remarks of record in the later application and include a 
copy of the original affidavit or declaration filed in the parent application.

Examiner Note:

This form paragraph is to be used in applications filed under  37 CFR 
1.53(b) and former  37 CFR 1.60.  Do not use this paragraph in applica-
tions filed under  37 CFR 1.53(d) and former  37 CFR 1.62 applications, 
since affidavits and/or declarations, such as those submitted under  37 
CFR 1.131 and  37 CFR 1.132 filed during the prosecution of the parent 
nonprovisional application automatically become a part of the  37 CFR 
1.53(d) and former  37 CFR 1.62 applications.

EXTENSIONS OF TIME

If an extension of time is necessary to establish continu-
ity between the prior application and the continuing appli-
cation filed under  37 CFR 1.53(b), the petition for an 
extension of time must be filed as a separate paper directed 
to the prior nonprovisional application.  Under  37 CFR 
1.136(a)(3), an authorization to charge all required fees, 
fees under  37 CFR 1.17, or all required extension of time 
fees will be treated as a constructive petition for an exten-
sion of time in any concurrent or future reply requiring a 
petition for an extension of time for its timely submission.  
A continuing application filed under  37 CFR 1.53(b) is a 
new application which is assigned a new application num-
ber and filing date and is placed in a new file wrapper 
maintained separately from the file of the prior application.  
The filing of a continuing application is not a paper 
directed or placed in the file of the prior application and is 
not a  "reply" to the last Office action in the prior applica-
tion.  Thus, a petition for an extension of time and the fee 
set forth in  37 CFR 1.17 are required to be filed as a sepa-
rate paper in the prior application.  Any petition for an 
extension of time directed to the prior application must be 
accompanied by its own certificate of mailing under  37 
CFR 1.8 (if mailed by first class mail) or under  37 CFR 
1.10 (if mailed by Express Mail), if the benefits of those 
rules are desired.

ABANDONMENT OF THE PRIOR NONPROVI-
SIONAL APPLICATION

 Under  37 CFR 1.53(b) and  37 CFR 1.63(d) practice, 
the prior nonprovisional application is not automatically 
abandoned upon filing of the continuing application.  If the 
prior nonprovisional application is to be expressly aban-
doned, such a paper must be signed in accordance with  37 
CFR 1.138.  A registered attorney or agent not of record 
acting in a representative capacity under  37 CFR 1.34(a) 
may also expressly abandon a prior nonprovisional applica-
tion as of the filing date granted to a continuing application 
when filing such a continuing application.

 If the prior nonprovisional application which is to be 
expressly abandoned has a notice of allowance issued 
therein, the prior nonprovisional application can become 
abandoned by the nonpayment of the issue fee.  However, 
once an issue fee has been paid in the prior application, 
even if the payment occurs following the filing of a con-
tinuing application under  37 CFR 1.53(b) and  37 CFR 
1.63(d), a petition to withdraw the prior nonprovisional 
application from issue must be filed before the prior non-
provisional application can be abandoned (37 CFR 1.313).

 If the prior nonprovisional application which is to be 
expressly abandoned is before the Board of Patent Appeals 
and Interferences, a separate notice should be forwarded by 
the appellant to the Board, giving them notice thereof.

 After a decision by the Court of Appeals for the Federal 
Circuit (CAFC) in which the rejection of all claims is 
affirmed, proceedings are terminated on the date of receipt 
of the Court's certified copy of the decision by the Patent 
and Trademark Office. Continental Can Company, Inc. v. 
Schuyler, 326 F. Supp. 283, 168 USPQ 625 (D.D.C. 1970).  
See  MPEP ? 1216.01.

EXAMINATION

 The practice relating to making first action rejections 
final also applies to continuation and divisional applica-
tions filed under  37 CFR 1.53(b) and  37 CFR 1.63(d). See  
MPEP ? 706.07(b).

 Any preliminary amendment filed with a  37 CFR 
1.53(b) application which is to be entered after granting of 
the filing date should be entered by the technical support 
personnel of the patent examining group where the applica-
tion is finally assigned to be examined.  Any errors in the 
numbering of claims in preliminary amendment(s) can be 
corrected in the patent examining groups.  Accordingly, 
these applications should be classified and assigned to the 
proper patent examining group by taking into consideration 
the claims that will be before the examiner upon entry of 
such a preliminary amendment.

 If the examiner finds that pages of the specification or 
drawings figures described in the specification are missing 
and the application is a continuation or divisional applica-
tion filed under  37 CFR 1.53(b) using a copy of the oath or 
declaration filed in the prior application under  37 CFR 
1.63(d), the examiner must check to determine whether the 
continuation or divisional application, as originally filed, 
includes a statement incorporating by reference the prior 
application(s).  The statement may appear in the specifica-
tion or in the application transmittal letter. The inclusion of 
this incorporation by reference of the prior application(s) 
will permit applicant to amend the continuation or divi-
sional application to include any subject matter in the prior 
application(s) without the need for a petition.  If the contin-
uation or divisional application filed under  37 CFR 1.53(b) 
and  37 CFR 1.63(d) does not include the incorporation by 
reference statement in the application papers as originally 
filed and applicant has not been informed of the omitted 
items, the application should be returned to OIPE for mail-
ing of a "Notice of Omitted Item(s)." 

201.06(d)	37 CFR 1.53(d) Continued 
Prosecution Application (CPA) 
Practice [R-1]

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

*****

(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."

*****

IN GENERAL

In addition to the provisions of  37 CFR 1.53(b), a con-
tinuation or divisional (but not a continuation-in-part) 
application may be filed under  37 CFR 1.53(d).  A contin-
uation or divisional application filed under  37 CFR 1.53(d) 
is called a "Continued Prosecution Application" or "CPA."  
A CPA has a number of advantages compared to a continu-
ation or divisional application filed under  37 CFR 1.53(b).  
For example, the papers required to be filed in the Patent 
and Trademark Office in order to secure a filing date under  
37 CFR 1.53(d) are minimal compared to  37 CFR 1.53(b).  
In addition, the Office will not issue a new filing receipt for 
a CPA.  See  37 CFR 1.54(b).  By not issuing a filing 
receipt for a CPA, the Office will be able to perform the 
pre-examination processing of any CPA in the patent exam-
ining group to which the prior application was assigned.  A 
CPA may also be filed by facsimile transmission or by 
hand-delivery directly to the patent examining group to 
which the prior application was assigned.  The use of these 
techniques for filing a CPA will avoid the delay inherent in 
routing a new application from the Office of Initial Patent 
Examination (OIPE) to the appropriate patent examining 
group.  As a result, the time delay between the filing date 
and the first Office action should be less for a CPA than for 
an application filed under  37 CFR 1.53(b).  >The PTO will 
treat continuation CPAs, for examination priority purposes 
only, as if they were "amended" applications (as of the CPA 
filing date) and not as "new" applications. As "amended" 
applications generally have a shorter time frame for being 
acted on by examiners than "new" applications, this treat-
ment (of CPAs as "amended" applications) will result in 
first Office actions being mailed in continuation CPAs 
much sooner than if they had been filed as continuations 
under 37 CFR  1.53(b) (or under former 37 CFR  1.60 or  
1.62). Therefore, applicants are strongly encouraged to file 
any preliminary amendment in a CPA at the time the CPA 
is filed.<

A request for a CPA expressly abandons the prior appli-
cation as of the filing date of the request for the CPA.  See  
37 CFR 1.53(d)(2)(v).  Therefore, where the prior applica-
tion is not to be abandoned, any continuation or divisional 
application must be filed under  37 CFR 1.53(b).  >If appli-
cant wants the PTO to disregard a previously filed request 
for a CPA (and not recognize its inherent request to 
expressly abandon the prior application) and to treat the 
paper as the filing of an application under 37 CFR  1.53(b), 
the applicant must file a petition under 37 CFR  1.182. A 
request to expressly abandon an application is not effective 
until the abandonment is acknowledged, including the 
express abandonment of the prior application of a CPA that 
occurs by operation of 37 CFR  1.53(d)(2)(v). The express 
abandonment of the prior application is acknowledged and 
becomes effective upon processing and entry of the CPA 
into the file of the prior application. Thus, such a petition 
under 37 CFR  1.182 should be filed expeditiously since 
the petition will not be granted once the request for a CPA 
has been entered into the prior application (and the inherent 
request to expressly abandon the prior application has been 
acknowledged). If the request for a CPA has been entered 
into the prior application by the time the petition under 37 
CFR  1.182 and the application file are before the deciding 
official for a decision on the petition, the petition will be 
denied. It is noted, however, that if the applicant intended 
to file a second application (either a continuation or a divi-
sional) without abandoning the prior application, applicant 
can still achieve that result without loss of the benefit of the 
original filing date by: (1) continuing the prosecution of the 
original application via the CPA; and (2) filing a new con-
tinuation/divisional under 37 CFR  1.53(b) claiming benefit 
of the CPA and its parent applications under 35 U.S.C.  120 
during the pendency of the CPA.< 

The CPA procedure set forth in  37 CFR 1.53(d) is avail-
able for "utility," design, plant, and reissue applications 
when filing either a continuation or divisional application 
of the same type ("utility," design, plant, reissue) as the 
prior nonprovisional application.  Since no new matter may 
be introduced in a CPA, the procedure set forth in  37 CFR 
1.53(d) is not available for filing a continuation-in-part 
application.  All continuation-in-part applications must be 
filed under  37 CFR 1.53(b) and a newly executed oath or 
declaration is required. 

Under the CPA procedure, the continuation or divisional 
application will utilize the file wrapper and contents of the 
prior nonprovisional application, including the specifica-
tion, drawings and oath or declaration from the prior non-
provisional application, and will be assigned the same 
application number as the prior nonprovisional application.  
No filing receipt will be mailed by the Patent and Trade-
mark Office for the CPA.  Any changes to the continuation 
or divisional application desired when filing the CPA must 
be made in the form of an amendment to the prior applica-
tion as it existed prior to filing the CPA, see  37 CFR 
1.53(d)(5).  Any new specification filed with the CPA 
request will not be considered part of the original applica-
tion papers, but will be treated as a substitute specification 
in accordance with  37 CFR 1.125. However, the applicant 
must comply with the requirements of  37 CFR 1.125(b) 
before the substitute specification will be entered into the 
CPA.  >Since 37 CFR  1.125(b) requires that a substitute 
specification be accompanied by, inter alia, a statement 
that the substitute specification includes no new matter, any 
substitute specification containing new matter will be 
denied entry by the examiner. Any preliminary amendment 
to the written description and claims, other than a substitute 
specification, filed with a CPA request will ordinarily be 
entered. Any new matter which is entered, however, will be 
required to be canceled pursuant to 35 U.S.C.  132 from the 
descriptive portion of the specification. Further, any 
claim(s) which relies upon such new matter for support will 
be rejected under 35 U.S.C.  112, first paragraph. See 
MPEP ?  2163.06. In the event that a substitute specifica-
tion or preliminary amendment containing new matter was 
filed with a request for a CPA, applicant may file a petition 
under 37 CFR  1.182 requesting that the substitute specifi-
cation or preliminary amendment be removed from the 
CPA application file, and be accorded the status as a sepa-
rate application by being placed in a new file wrapper and 
assigned a new application number, with the new applica-
tion being accorded a filing date as of the date the request 
for a CPA and substitute specification/preliminary amend-
ment were filed. Of course, a request for a CPA is not 
improper simply because the request is accompanied by a 
substitute specification or preliminary amendment contain-
ing new matter. Thus, an applicant will not be entitled to a 
refund of the filing fee paid in a proper CPA as a result of 
the granting of a petition under 37 CFR  1.182 requesting 
that the substitute specification or preliminary amendment 
be removed from the CPA application file.<

A CPA may be based on a prior CPA so long as the prior 
CPA is complete under  37 CFR 1.51(b).  There is no limit 
to the number of CPAs that may be filed in a chain of con-
tinuing applications.  However, only one CPA may be 
pending at one time based on the same prior nonprovisional 
application. 

Under  37 CFR 1.53(d), the specification, claims, and 
drawings, and any amendments entered in the prior nonpro-
visional application are used in the CPA.  A new filing fee 
is required in accordance with  35 U.S.C. 41 and  37 CFR 
1.16.  The only other statutory requirement under  35 
U.S.C. 111(a) is a signed oath or declaration.  Since a CPA 
cannot contain new matter, the oath or declaration filed in 
the prior nonprovisional application would supply all the 
information required under the statute and rules to have a 
complete application and to obtain a filing date.  Accord-
ingly, the previously filed oath or declaration will be con-
sidered to be the oath or declaration of the CPA.

 The original disclosure of a CPA is the same as the orig-
inal disclosure of the parent non-continued prosecution 
application and amendments entered in the parent applica-
tion(s).  However, any subject matter added by amendment 
in the parent application which is deemed to be new matter 
in the parent application will also be considered new matter 
in the CPA.  No amendment filed in a CPA, even if filed on 
the filing date of the CPA, may include new matter.

Envelopes containing only requests and fees for filing a 
CPA should be marked "Box CPA" and requests for a CPA 
filed by facsimile transmission should be clearly marked 
"Box CPA."  See  37 CFR 1.53(d)(9).

If application papers are in any way designated as a CPA 
filing under  37 CFR 1.53(d) (e.g., contain a reference to  
37 CFR 1.53(d), CPA, or continued prosecution applica-
tion), the application papers will be treated by the Office as 
a CPA filed under  37 CFR 1.53(d), even if the application 
papers also contain other inconsistent designations (e.g., if 
the papers are also designated as an application filed under  
37 CFR 1.53(b)).

CONDITIONS FOR FILING A CPA

A continuation or divisional application may be filed 
under  37 CFR 1.53(d), if the prior nonprovisional applica-
tion is 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. The term "prior nonprovi-
sional application" in  37 CFR 1.53(d)(1) means the non-
provisional application immediately prior to the CPA. A 
complete application as defined by  37 CFR 1.51(b) and a 
"national stage of an international application in compli-
ance with  35 U.S.C. 371" must each contain, inter alia, the 
appropriate filing fee and a signed oath or declaration under  
37 CFR 1.63. 

In addition, a continuation or divisional application filed 
under  37 CFR 1.53(d) must be filed before the earliest of:  
(1) 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; (2) abandonment of the prior application; or 
(3) termination of proceedings on the prior application.

INITIAL PROCESSING

A CPA request will be initially processed by the patent 
examining group assigned the prior application.  The patent 
examining group will verify that (1) the prior application is 
a nonprovisional application, (2) the correct application 
number of the prior nonprovisional application is identified 
in the request, (3) the request is properly signed, (4) the 
prior nonprovisional application was pending on, and that 
the issue fee has not been paid in the prior nonprovisional 
application on or prior to, the filing date of the CPA 
request, (5) the prior nonprovisional application was com-
plete under  37 CFR 1.51(b) (e.g., the filing fee has been 
paid and a signed oath or declaration under  37 CFR 1.63 
has been filed in the prior application), and (6) the proper 
filing fee has been paid in the CPA.  If one or more condi-
tions for filing a CPA have not been satisfied or the proper 
filing fee has not been paid, the applicant will be so notified 
and no examination will be made in the CPA until the filing 
error has been corrected or the proper filing fee submitted.  
See  37 CFR 1.53(h).  If an examiner discovers that an 
improper or incomplete CPA has been forwarded to the 
examiner in error, the application should be immediately 
returned to a supervisory applications examiner (SAE) 
within the patent examining group.  The improper or 
incomplete CPA is not to be returned to OIPE.

INCORRECT PARENT APPLICATION NUMBER 
IDENTIFIED

A request for a CPA must identify the prior nonprovi-
sional application (37 CFR 1.53(d)(2)(i)) by application 
number (series code and serial number) or by serial number 
and filing date.  Where a paper requesting a CPA is filed 
which does not properly identify the prior nonprovisional 
application number, the patent examining group should 
attempt to identify the proper application number by refer-
ence to other identifying information provided in the CPA 
papers, e.g., name of the inventor, filing date, title of the 
invention, and attorney's docket number of the prior appli-
cation. If the patent examining group is able to identify the 
correct application number of the prior application, the cor-
rect application number should be entered in red ink on the 
paper requesting the CPA and the entry should be dated and 
initialed.  If the patent examining group is unable to iden-
tify the application number of the prior application and the 
party submitting the CPA papers is a registered practitioner, 
the practitioner may be requested by telephone to supply a 
letter signed by the practitioner providing the correct appli-
cation number.  If all attempts to obtain the correct applica-
tion number are unsuccessful, the paper requesting the CPA 
should be returned by the patent examining group to the 
sender where a return address is available.  The returned 
CPA request must be accompanied by a cover letter which 
will indicate to the sender that if the returned CPA request 
is resubmitted to the Patent and Trademark Office with the 
correct application number within two weeks of the mail 
date on the cover letter, the original date of receipt of the 
CPA request will be considered by the Patent and Trade-
mark Office as the date of receipt of the CPA request.  See  
37 CFR 1.5(a).  A copy of the returned CPA request and a 
copy of the date-stamped cover letter should be retained by 
the patent examining group.  Applicants may use either the 
Certificate of Mailing or Transmission procedure under  37 
CFR 1.8 or the "Express Mail" procedure under  37 CFR 
1.10 for resubmissions of returned CPA requests if they 
desire to have the benefit of the date of deposit in the 
United States Postal Service.  If the returned CPA request is 
not resubmitted within the two-week period with the cor-
rect application number, the patent examining group should 
cancel the original "Office Date" stamp on the CPA request 
and re-stamp the returned CPA request with the date of 
receipt of the resubmission or with the date of deposit as 
"Express Mail" with the United States Postal Service, if the 
CPA request is resubmitted under  37 CFR 1.10.  Where the 
CPA request is resubmitted later than two weeks after the 
return mailing by the Patent and Trademark Office, the later 
date of receipt or date of deposit as "Express Mail" of the 
resubmission will be considered to be the filing date of the 
CPA request.  The two-week period to resubmit the 
returned CPA request is not extendible.  See  37 CFR 
1.5(a).

In addition to identifying the application number of the 
prior application, applicant is urged to furnish in the request 
for a CPA the following information relating to the prior 
application to the best of his or her ability: (1) title of 
invention; (2) name of applicant(s); and (3) correspondence 
address.  See  37 CFR 1.53(d)(8). 

SIGNATURE REQUIREMENT

A CPA is a request to expressly abandon the prior appli-
cation (37 CFR 1.53(d)(2)(v)) and, therefore, must be prop-
erly signed.  For a listing of the individuals who may 
properly sign a CPA request, see  37 CFR 1.33(b).  In a 
joint application with no attorney or agent, all applicants 
must sign the CPA request in order for the CPA request to 
be considered properly signed.  An unsigned or improperly 
signed CPA request will be placed in the file of the prior 
application, and is entitled to an application filing date, but 
is ineffective to abandon the prior application.  A CPA will 
NOT be examined until the CPA request is properly signed.

A request for a CPA may be signed by a registered prac-
titioner acting in a representative capacity under  37 CFR 
1.34(a).  However, correspondence concerning the CPA 
will be sent by the Office to the correspondence address as 
it appears in the prior nonprovisional application until a 
new power of attorney, or change of correspondence 
address signed by an attorney or agent of record in the prior 
application, is filed in the CPA.

A request for a CPA may also be signed by the assignee 
or assignees of the entire interest.  However, the request 
must be accompanied by papers establishing the assignee's 
ownership under  37 CFR 3.73(b), unless such papers were 
filed in the prior application and ownership has not 
changed.

FILING DATE

The filing date of a CPA is the date on which a request 
on a separate paper for a CPA is filed.  A request for a CPA 
cannot be submitted as a part of papers filed for another 
purpose, see  37 CFR 1.53(d)(2), (e.g., the filing of a 
request for a CPA within an amendment after final for the 
prior application is an improper request for a CPA).

A paper requesting a CPA may be sent to the Patent and 
Trademark Office by mail (see  MPEP ? 501), by facsimile 
transmission (see  MPEP ? 502.01) or it may be filed 
directly at the Attorney's Window located in Room 1B03 of 
Crystal Plaza 2, 2011 South Clark Place, Arlington, VA.  In 
addition, a CPA request may be delivered in person to the 
patent examining group where the prior application is 
assigned.  All CPA requests should be clearly marked "Box 
CPA."

The date of receipt accorded to a CPA request sent by 
facsimile transmission is the date the complete transmis-
sion is received by an Office facsimile unit, unless the 
transmission is completed on a Saturday, Sunday, or Fed-
eral holiday within the District of Columbia.  Correspon-
dence for which transmission was completed on a Saturday, 
Sunday, or Federal holiday within the District of Columbia, 
will be accorded a receipt date of the next succeeding day 
which is not a Saturday, Sunday, or Federal holiday within 
the District of Columbia.  A CPA transmitted to the Patent 
and Trademark Office should be transmitted to the patent 
examining group or art unit to which the prior application is 
assigned. 

>In order to encourage applicants to transmit CPA 
requests directly to the patent examining group or art unit 
to which the prior application is assigned, the PTO will 
only acknowledge receipt of a CPA request filed by facsim-
ile transmission where the CPA request is transmitted 
directly to the patent examining group or art unit to which 
the prior application is assigned. Applicants filing a CPA 
by facsimile transmission may include a "Receipt for Fac-
simile Transmitted CPA" (PTO/SB/29A) containing a mail-
ing address and identifying information (e.g., the prior 
application number, filing date, title, first named inventor) 
with the request for a CPA. The PTO will: (1) separate the 
"Receipt for Facsimile Transmitted CPA" from the CPA 
request papers; (2) date-stamp the "Receipt for Facsimile 
Transmitted CPA"; (3) verify that the identifying informa-
tion provided by the applicant on the "Receipt for Facsim-
ile Transmitted CPA" is the same information provided on 
the accompanying request for a CPA; and (4) mail the 
"Receipt for Facsimile Transmitted CPA" to the mailing 
address provided on the "Receipt for Facsimile Transmitted 
CPA." The "Receipt for Facsimile Transmitted CPA" can-
not be used to acknowledge receipt of any paper(s) other 
than the request for a CPA. A returned "Receipt for Facsim-
ile Transmitted CPA" may be used as prima facie evidence 
that a request for a CPA containing the identifying informa-
tion provided on the "Receipt for Facsimile Transmitted 
CPA" was filed by facsimile transmission on the date 
stamped thereon by the PTO. As the PTO will verify only 
the identifying information contained on the request for a 
CPA, and will not verify whether the CPA was accompa-
nied by other papers (e.g., a preliminary amendment), the 
"Receipt for Facsimile Transmitted CPA" cannot be used as 
evidence that papers other than a CPA were filed by facsim-
ile transmission in the PTO. Likewise, applicant-created 
"receipts" for acknowledgment of facsimile transmitted 
papers (whether created for the acknowledgment of a CPA 
or other papers) cannot be used as evidence that papers 
were filed by facsimile in the PTO. Applicants are cau-
tioned not to include information on a "Receipt for Facsim-
ile Transmitted CPA" that is intended for retention in the 
application file, as the PTO does not plan on retaining a 
copy of such receipts in the file of the application.<

An applicant filing a CPA by facsimile must include an 
authorization to charge the basic filing fee to a deposit 
account, or the application will be treated under  37 CFR 
1.53(f) as having been filed without the basic filing fee (as 
fees cannot otherwise be transmitted by facsimile).

37 CFR 1.6(f) provides for the situation in which the 
Office has no evidence of receipt of a CPA transmitted to 
the Office by facsimile transmission. 37 CFR 1.6(f) 
requires that a showing thereunder include, inter alia, a 
copy of the sending unit's report confirming transmission of 
the application or evidence that came into being after the 
complete transmission of the application and within one 
business day of the complete transmission of the applica-
tion.

The Certificate of Mailing Procedure under  37 CFR 1.8 
does not apply to filing a request for a CPA, since the filing 
of such a request is considered to be a filing of national 
application papers for the purpose of obtaining an applica-
tion filing date (**>37 CFR 1.8(a)(2)(i)(A)<).  Thus, if (1) 
the Patent and Trademark Office mails a final Office action 
on July 2, 1997 (Wednesday), with a shortened statutory 
period of 3 months to *>reply< and (2) a petition for a 
three-month extension of time (and the fee) and a CPA are 
received in the Patent and Trademark Office on January 5, 
1998 (Monday), accompanied by a certificate of mailing 
under  37 CFR 1.8 dated January 2, 1998 (Friday), then the 
prior application was abandoned on January 3, 1998, and 
the CPA is improper because the CPA was not filed before 
the abandonment of the prior application.  As a further 
example, if (1) the Patent and Trademark Office mails a 
final Office action on July 2, 1997 (Wednesday), with a 
shortened statutory period of 3 months to *>reply< and (2) 
applicant submits a petition for a three-month extension of 
time (and the fee) and a CPA request via facsimile trans-
mission accompanied by a certificate of transmission under  
37 CFR 1.8 at 9:00 PM (PST) on January 2, 1998 (Friday), 
but the Patent and Trademark Office does not receive the 
complete transmission until 12:01 AM (EST) on January 3, 
1998 (Saturday), then the CPA is improper because the 
CPA request was not filed until January 5, 1998, see 
37 CFR 1.6(a)(3), which is after the abandonment (mid-
night on Friday, January 2, 1998) of the prior application.

FILING FEE

The filing fee for a CPA is: (1) the basic filing fee as set 
forth in  37 CFR 1.16; and (2) any additional fee required 
by  37 CFR 1.16 based on the number of claims remaining 
in the application after entry of any amendment accompa-
nying the CPA and entry of any amendments under 37 CFR 
1.116 not entered in the prior nonprovisional application 
which applicant has requested to be entered in the CPA.  
See 37 CFR 1.53(d)(3).

A general authorization to charge fees to a deposit 
account which was filed in the prior application carries 
over from the prior nonprovisional application to a CPA.  
Thus, where a general authorization to charge fees to a 
deposit account was filed in the prior application the patent 
examining group should charge the necessary filing fee of 
the CPA to the deposit account.  Because small entity status 
does not automatically carry over from the prior application 
to the CPA, unless the request for a CPA specifically indi-
cates that the filing fee is to be charged in the small entity 
amount, the large entity filing fee should be charged. 

Where a general authorization to charge fees to a deposit 
account was filed in the prior application and applicant 
desires to file a CPA without paying the filing fee on the fil-
ing date of the application, applicant may file the CPA with 
specific instructions revoking the general authorization 
filed in the prior application.

Where a filing date has been assigned to a CPA, but the 
basic filing fee is insufficient or has been omitted, applicant 
will be so notified by the patent examining group and given 
a period of time in which to file the missing fee and to pay 
the surcharge set forth in 37 CFR 1.16(e) in order to pre-
vent abandonment of the application.  The time period usu-
ally set is 2 months from the date of notification.  This time 
period is subject to the provisions of  37 CFR 1.136(a).  A 
CPA will not be placed upon the files for examination until 
all of its required parts, including the filing fee and sur-
charge, if necessary, are received.  See 37 CFR 1.53(h).  
Thus, it would be inappropriate to conduct an interview or 
to issue an action on the merits in the CPA until the filing 
fee and surcharge, if necessary, are received.

EXTENSIONS OF TIME

If an extension of time is necessary to establish continu-
ity between the prior application and the CPA, the petition 
for extension of time should be filed as a separate paper 
directed to the prior nonprovisional application.  However, 
a CPA is not improper simply because the request for a 
CPA is combined in a single paper with a petition for exten-
sion of time.  The "separate paper" requirement of  37 CFR 
1.53(d)(2) is intended to preclude an applicant from bury-
ing a request for a CPA in a paper submitted primarily for 
another purpose, e.g., within an amendment after final for 
the prior application. 

While the filing of a CPA is not strictly a reply to an 
Office action mailed in a prior application, a request for a 
CPA is a paper directed to and placed in the file of the prior 
application, and seeks to take action in (i.e., expressly 
abandon) the prior application.  Thus, it will be considered 
a "reply" for purposes of  37 CFR 1.136(a)(3).  As a result, 
an authorization in the prior application to charge all 
required fees, fees under  37 CFR 1.17, or all required 
extension of time fees to a deposit account will be treated 
as a constructive petition for an extension of time in the 
prior application for the purpose of establishing continuity 
with the CPA.  The correct extension fee to be charged in 
the prior application would be the extension fee necessary 
to establish continuity between the prior application and the 
CPA on the filing date of the CPA.

If an extension of time directed to the prior application is 
filed as a separate paper, it must be accompanied by its own 
certificate of mailing under  37 CFR 1.8 (if mailed by first 
class mail) or under  37 CFR 1.10 (if mailed by Express 
Mail), if the benefits of those rules are desired.

NOTICE OF CPA FILING

Since a "Notice of Abandonment" is not mailed in the 
prior application as a result of the filing of a CPA nor is a 
filing receipt normally sent for a CPA, the examiner should 
advise the applicant that a request for a CPA has been 
granted by including Form Paragraph 2.30 in the first 
Office action of the CPA.

?  2.30 CPA Status Acceptable

The request filed on [1] for a Continued Prosecution Application 
(CPA) under  37 CFR 1.53(d) based on parent Application No. [2] is 
acceptable and a CPA has been established.  An action on the CPA fol-
lows.

Examiner Note:

1.	Use this paragraph in the first Office action of a CPA to advise the 
applicant that a request for a CPA is acceptable and that a CPA has been 
established. This notice should be given, since applicant is not notified of 
the abandonment of the parent nor is a filing receipt normally sent for a 
CPA.

2.	In bracket 1 insert the filing date of the request for a CPA.

3.	In bracket 2 insert the Application Number of the parent application.

A "conditional" request for a CPA will not be permitted.  
Any "conditional" request for a CPA submitted as a sepa-
rate paper with an amendment after final in an application 
will be treated as an unconditional request for a CPA of the 
application.  This will result (by operation of  37 CFR 
1.53(d)(2)(v)) in the abandonment of the prior application, 
and (if so instructed in the request for a CPA) the amend-
ment after final in the prior application will be treated as a 
preliminary amendment in the CPA.  The examiner should 
advise the applicant that a "conditional" request for a CPA 
has been treated as an unconditional request for a CPA and 
has been accepted by including Form Paragraph 2.35 in the 
first Office action of the CPA.

?  2.35 CPA Status Acceptable - Conditional Request

Receipt is acknowledged of the "conditional" request for a Continued 
Prosecution Application (CPA) filed on [1] under  37 CFR 1.53(d) based 
on prior Application No. [2].  Any "conditional" request for a CPA sub-
mitted as a separate paper is treated as an unconditional request for a CPA.  
Accordingly, the request for a CPA application is acceptable and a CPA 
has been established.  An action on the CPA follows.

Examiner Note:

1.	Use this paragraph in the first Office action of a CPA to advise the 
applicant that a "conditional" request for a CPA is treated as an uncondi-
tional request and the CPA is acceptable and that a CPA has been estab-
lished. This notice should be given, since applicant is not notified of the 
abandonment of the parent nor is a filing receipt normally sent for a CPA.

2.	In bracket 1 insert the filing date of the request for a CPA.

3.	In bracket 2 insert the Application Number **>identified in the CPA 
request.<

Where the examiner recognizes that a paper filed in the 
prior application contains a request for a CPA, but the 
request is not in a separate paper, the examiner should, if 
possible, contact applicant by telephone to notify applicant 
that the request for a CPA is ineffective or notify the appli-
cant in the next Office action that the CPA request is inef-
fective by using Form Paragraph 2.31.

?  2.31 CPA Status Not Acceptable - Request Not on Separate 
Paper

Receipt is acknowledged of the request for a Continued Prosecution 
Application (CPA) filed on [1] under  37 CFR 1.53(d) based on Applica-
tion No. [2]. However, because the request was not submitted on a sepa-
rate paper as required by  37 CFR 1.53(d)(2), the request is not acceptable 
and no CPA has been established.

Examiner Note:

1.	Use this paragraph to inform applicant that a request for a CPA is not 
in compliance with  37 CFR 1.53(d)(2) and, therefore, no CPA has been 
established.

2.	In bracket 1 insert the filing date of the paper containing the request 
for a CPA.

3.	In bracket 2 insert the Application Number ** identified in the CPA 
request.

INVENTORSHIP

The inventive entity set forth in the prior nonprovisional 
application automatically carries over into the CPA 
UNLESS the request for a CPA is accompanied by or 
includes on filing a statement requesting the deletion of the 
name or names of the person or persons who are not inven-
tors of the invention being claimed in the CPA. 37 CFR 
1.53(d)(4).  The statement requesting the deletion of the 
names of the person or persons who are not inventors in the 
continuation or divisional application must be signed by 
person(s) authorized pursuant to  37 CFR 1.33(b) to sign an 
amendment in the continuation or divisional application.  
The examiner should acknowledge receipt of a statement 
filed with a CPA requesting the deletion of the name or 
names of the person or persons who are not inventors of the 
invention being claimed in the CPA in the first Office 
action in the CPA by using Form Paragraph 2.32.

?  2.32 Request To Delete a Named Inventor

Receipt is acknowledged of the statement requesting that [1] be deleted 
as a named inventor which was filed with the Continued Prosecution 
Application (CPA) on [2]. The inventorship has been corrected as 
requested.

Examiner Note:

1.	Use this paragraph where a Continued Prosecution Application 
(CPA) is filed accompanied 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. Any request to delete a named 
inventor in a CPA filed after the CPA is filed must be accompanied by a 
petition under  37 CFR 1.48. 

2.	In bracket 1 insert the name or names of the inventor(s) requested to 
be deleted.

3.	In bracket 2 insert the filing date of the CPA.

After the first Office action is mailed, the application file 
should be sent to OIPE for revision of its records to reflect 
the change of inventorship.  The examiner should note the 
change of inventorship 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).  Any request by applicant for a corrected filing 
receipt to show the change in inventorship should not be 
submitted until after the examiner has acknowledged the 
change in inventorship in an Office action.  Otherwise, the 
"corrected" filing receipt may not show the change in 
inventorship. 

The inventive entity of the CPA will be the same as the 
inventive entity of the prior application even if the CPA 
papers include a transmittal letter or a new oath or declara-
tion naming an inventor not named in the prior application.  
However, the new oath or declaration will be placed in the 
application file.  Upon review of the application, the exam-
iner will notify the applicant in the first Office action using 
Form Paragraph 2.33 that the inventive entity of the prior 
application has been carried over into the CPA. If the 
inventive entity set forth in the transmittal letter of the new 
oath or declaration is desired, then a petition under 37 CFR 
1.48 along with the required fee set forth in 37 CFR 1.17(i) 
must be filed.  No new oath or declaration need be filed 
with the later-filed petition under  37 CFR 1.48 if such was 
submitted on filing of the CPA.  If a petition under 37 CFR 
1.48 is not filed, it should be noted that the filing in a CPA 
of a transmittal letter or a new oath or declaration contain-
ing an inventor not named in the prior nonprovisional 
application may result in the claims in the CPA being 
rejected under  35 U.S.C. 102(f).

?  2.33 New Inventor Identified

It is noted that [1] identified as a named inventor in the Continued 
Prosecution Application (CPA) filed under  37 CFR 1.53(d) on [2], but no 
petition under  37 CFR 1.48, as is required, was filed to correct the inven-
torship. Any request to add an inventor must be in the form of a petition 
under  37 CFR 1.48. Otherwise, the inventorship in the CPA shall be the 
same as in the prior application.

Examiner Note:

1.	Use this paragraph where a request for a Continued Prosecution 
Application (CPA) identifies one or more inventors who were not named 
as inventors in the prior application on the filing date of the CPA.

2.	In bracket 1 insert the name or names of the inventor(s) requested to 
be added followed by either --was-- or --were--, as appropriate.

3.	In bracket 2 insert the filing date of the CPA.

No inventor may be added to a CPA except by way of a 
petition under 37 CFR 1.48.  Also, after the filing date of 
the CPA, no inventor may be deleted in a CPA, except by 
way of a petition under 37 CFR 1.48.  A petition for correc-
tion of inventorship under 37 CFR 1.48 filed in the prior 
nonprovisional application, but not considered in the prior 
nonprovisional application at the time the CPA is filed,   
will be considered in the CPA. 

BENEFIT OF EARLIER FILING DATE

A request for a CPA is a specific reference under 
35 U.S.C. 120 to every application assigned the application 
number identified in the request, and 37 CFR 1.78(a)(2) 
provides that a request for a CPA is the specific reference 
under 35 U.S.C. 120 to the prior application.  That is, the 
CPA includes the request for an application under  37 CFR 
1.53(d) and the recitation of the application number of the 
prior application in such request is the "specific reference 
to the earlier filed application" required by 35 U.S.C. 120.  
No further amendment to the specification of the CPA is 
required by 35 U.S.C. 120 or  37 CFR 1.78(a) to identify or 
reference the prior application, as well as any other applica-
tion assigned the application number of the prior applica-
tion (e.g., in instances in which a CPA is the last in a chain 
of CPAs).

Where an application claims a benefit under 35 U.S.C. 
120 of a chain of applications, the application must make a 
reference to the first (earliest) application and every inter-
mediate application.  See Sampson v. Ampex Corp., 463 
F.2d 1042, 1044-45, 174 USPQ 417, 418-19 (2d Cir. 1972); 
Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 
93, 160 USPQ 177, 179 (7th Cir. 1968); Hovlid v. Asari, 
305 F.2d 747, 751, 134 USPQ 162, 165 (9th Cir. 1962). See 
also MPEP ? 201.11.  In addition, every intermediate appli-
cation must also make a reference to the first (earliest) 
application and every application after the first application 
and before such intermediate application.

In the situation in which there is a chain of CPAs, each 
CPA in the chain will, by operation of  37 CFR 1.53(d)(7), 
contain the required specific reference to its immediate 
prior application, as well as every other application 
assigned the application number identified in such request.  
Put simply, a specific reference to a CPA by application 
number and filing date will constitute a specific reference 
to: (1) the non-continued prosecution application originally 
assigned such application number (the prior application as 
to the first CPA in the chain); and (2) every CPA assigned 
the application number of such non-continued prosecution 
application.

Where the non-continued prosecution application origi-
nally assigned such application number itself claims the 
benefit of a prior application or applications under  35 
U.S.C. 120, 121, or 365(c),  37 CFR 1.78(a)(2) continues to 
require that such application contain in its first sentence a 
reference to any such prior application(s).  As a CPA uses 
the specification of the prior application, such a specific 
reference in the prior application (as to the CPA) will con-
stitute such a specific reference in the CPA, as well as every 
CPA in the event that there is a chain of CPAs.

Where an applicant in an application filed under 37 CFR 
1.53(b) seeks to claim the benefit of a CPA under 35 U.S.C. 
120 or 121 (as a continuation, divisional, or continuation-
in-part),  37 CFR 1.78(a)(2) requires a reference to the CPA 
by application number in the first sentence of such applica-
tion. 37 CFR 1.78(a)(2) provides that "[t]he identification 
of an application by application number under this section 
is the specific reference required by 35 U.S.C. 120 to every 
application assigned that application number."  Thus, 
where a referenced CPA is in a chain of CPAs, this refer-
ence will constitute a reference under  35 U.S.C. 120 and  
37 CFR 1.78(a)(2) to every CPA in the chain as well as the 
non-continued prosecution application originally assigned 
such application number.  

Therefore, regardless of whether an application is filed 
under 37 CFR 1.53(b) or (d), a claim under  35 U.S.C. 120 
to the benefit of a CPA is, by operation of 37 CFR 
1.53(d)(7) and 37 CFR 1.78(a)(2), a claim to every applica-
tion assigned the application number of such CPA.  In addi-
tion, applicants will not be permitted to choose to delete 
such a claim as to certain applications assigned that appli-
cation number (e.g., for patent term purposes).  See 37 CFR 
1.53(d)(7).

Further, an applicant in a CPA is not permitted to amend 
the first sentence of the specification to provide a specific 
reference to the prior application.  Any such amendment 
will not be entered.  The applicant should be advised in the 
next Office action that any such amendment to the specifi-
cation has not been entered by using Form Paragraph 2.34.  

?  2.34 Reference in CPA to Prior Application 

The amendment filed [1] requesting that the specification be amended 
to refer to the present Continued Prosecution Application (CPA) as a [2] 
application of Application No. [3] has not been entered.  As set forth in  37 
CFR 1.53(d)(7), a request for a CPA is the specific reference required by  
35 U.S.C. 120 to every application assigned the application number identi-
fied in such request. Thus, there is no need to amend the first sentence of 
the specification to refer back to the prior application and any such amend-
ment shall be denied entry.

Examiner Note:

1.	Use this paragraph to inform the applicant that an amendment to the 
first sentence of the specification referring to the CPA as a continuing 
application of the prior application has not been entered and will not be 
entered if submitted again.

2.	In bracket 1, insert the filing date of the amendment.

3.	In bracket 2, insert either --continuation-- or --divisional--.

4.	In bracket 3, insert the Application Number of the prior nonprovi-
sional application.

Claims under  35 U.S.C. 119(a)-(e) for the benefit of the 
filing dates of earlier applications in a parent application 
will automatically carry over to a CPA.

WAIVER OF CONFIDENTIALITY

A CPA is construed to include a waiver of confidential-
ity by the applicant under  35 U.S.C. 122 to the extent that 
any member of the public who is entitled under the provi-
sions of  37 CFR 1.14 to obtain access to, copies of, or 
information concerning either the prior application or any 
continuing application filed under the provisions of 37 CFR 
1.53(d) may be given similar access to, copies of, or similar 
information concerning, the other application(s) in the 
application file. 37 CFR 1.53(d)(6).  However, all applica-
tions in the file jacket of a pending CPA are treated as pend-
ing, rather than abandoned, in determining whether copies 
of, and access to, such applications will be granted. 37 CFR 
1.14(a)(3)(iv).  See MPEP ? 103 for further discussion of 
access to an abandoned application contained in the file of 
a pending CPA.

CERTIFIED COPY

 A certified copy of a CPA will be prepared by the Certi-
fication Branch upon request.  The certified copy will con-
sist of a copy of the most recent non-continued prosecution 
application in the chain of CPAs.  The filing date of the 
CPA will be shown in the certified copy as the filing date of 
the most recent non-continued prosecution application in 
the chain of CPAs.

SMALL ENTITY STATUS

 Small entity status established in the parent application 
does not automatically carry over to a CPA. Status as a 
small entity must be specifically established in every appli-
cation in which the status is available and desired.  How-
ever,  37 CFR 1.28(a)(2) provides that in any continuing 
application, including a CPA, status as a small entity may 
be established simply by paying the basic filing fee in the 
small entity amount.  If payment of the basic filing fee in 
the small entity amount is made in a CPA, it would not be 
necessary to file a new statement or a copy of the prior 
statement.  The payment of the small entity basic filing fee 
will be treated as a reference to the statement in the prior 
application.

TERMINAL DISCLAIMER

A terminal disclaimer filed in the parent application car-
ries over to a CPA.  The terminal disclaimer filed in the par-
ent application carries over because the CPA retains the     
same application number   as the parent application,   i.e., 
the application number to which the previously filed termi-
nal disclaimer is directed.  If applicant does not want the 
terminal disclaimer to carry over to the CPA, applicant 
must file a petition under  37 CFR 1.182 along with the 
required petition fee, requesting the terminal disclaimer 
filed in the parent application not be carried over to the 
CPA. See  MPEP ? 1490, "Withdrawing a Terminal Dis-
claimer," subheading entitled "A. Before Issuance of 
Patent."

PRIOR ELECTION

 An election made in the prior application carries over to 
the CPA only if all of the following conditions are met:  (1) 
the CPA is designated as a continuation or is not designated 
at all (i.e  ., the CPA is NOT designated as a divisional); (2) 
there was an express election by the applicant in reply to a 
restriction requirement in the prior application; (3) the CPA 
presents claim(s) drawn only to invention(s) claimed in the 
prior application; and (4) the CPA does not contain an indi-
cation that a shift in election is desired. 

Where all of the conditions are met, the examiner's first 
action should repeat the restriction requirement made in the 
prior application to the extent it is still applicable in the 
CPA and include a statement that prosecution is being con-
tinued on the invention elected and prosecuted by applicant 
in the prior application.

INFORMATION DISCLOSURE STATEMENTS

All information disclosure statements filed in the prior 
application that comply with the content requirements of  
37 CFR 1.98 will be considered in a CPA by the examiner.  
No specific request that the previously submitted informa-
tion be considered in a CPA is required. 

In addition, all information disclosure statements that 
comply with the content requirements of  37 CFR 1.98 and 
are filed within three months of 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 of the CPA, 
any information contained in an information disclosure 
statement complying with 37 CFR 1.98, and filed within 
that 3-month window must be considered by the examiner.  
Since a CPA requires less processing time than a file wrap-
per continuing application under former  37 CFR 1.62, it 
should be expected that a first Office action will normally 
issue in a CPA well within three months from the filing date 
of the CPA request.  The submission of an information dis-
closure statement after the first Office action is mailed 
could delay prosecution and result in the lost of patent 
term.  Therefore, applicants are encouraged to file any 
information disclosure statement in a CPA as early possi-
ble, preferably before the first Office action.  For further 
discussion of information disclosure statements, see  MPEP 
? 609.

COPIES OF AFFIDAVITS

 Affidavits and declarations, such as those under  37 
CFR 1.130, 1.131 and 1.132 filed during the prosecution of 
the parent nonprovisional application, automatically 
become a part of the CPA.  Therefore, no copy of the origi-
nal affidavit or declaration filed in the parent nonprovi-
sional application need be filed in the CPA.

FORMS

Form PTO/SB/29, "Continued Prosecution Application 
(CPA) Request Transmittal" >and Form PTO/SB/29A, 
"Receipt For Facsimile Transmitted CPA"< may be used by 
applicant for filing a CPA under  37 CFR 1.53(d).  The 
forms used by the patent examining groups to notify appli-
cants of defects regarding applications filed under  37 CFR 
1.53(d) are shown below.  "Notice of Improper Applica-
tion, No Filing Date Granted" Form PTO-2011; "Notice of 
Improper CPA Filing Under  37 CFR 1.53(d), No Filing 
Date Granted" Form PTO-2012; "Notice To File Missing 
Parts Of Application (CPA), Filing Date Granted" Form 
PTO-*>2021<; "Notice Of Incomplete Reply (CPA) (Filing 
Date Granted)" Form PTO-2018; and "Notice Of Abandon-
ment Under  37 CFR 1.53(f) (CPA) (Filing Date Granted)" 
Form PTO-2019.

Form PTO/SB/29. Continued Prosecution Application (CPA) Request Transmittal

Form PTO-2011. Notice of Improper Application

Form PTO-2012. Notice of Improper CPA Filing Under 37 CFR 1.53(d)

Form PTO-2016. Notice to File Missing Parts of Application (CPA)

Form PTO-2018. Notice of Incomplete Reply (CPA)

Form PTO-2019. Notice of Abandonment Under 37 CFR 1.53(f) (CPA)

201.07	Continuation Application

A continuation is a second application for the same 
invention claimed in a prior nonprovisional application and 
filed before the original becomes abandoned or patented. 
The continuation application may be filed under  37 CFR 
1.53(b) or 1.53(d). The applicant in the continuation appli-
cation must include at least one inventor named in the prior 
nonprovisional application. The disclosure presented in the 
continuation must be the same as that of the original appli-
cation; i.e., the continuation should not include anything 
which would constitute new matter if inserted in the origi-
nal application.

An application claiming the benefits of a provisional 
application under  35 U.S.C. 119(e) should not be called a 
"continuation'' of the provisional application since the 
application will have its patent term calculated from its fil-
ing date, whereas an application filed under  35 U.S.C. 120, 
121, or 365(c) will have its patent term calculated from the 
date on which the earliest application was filed, provided a 
specific reference is made to the earlier filed application(s),  
35 U.S.C. 154(a)(2) and (a)(3).

At any time before the patenting or abandonment of or 
termination of proceedings on his or her earlier nonprovi-
sional application, an applicant may have recourse to filing 
a continuation in order to introduce into the application a 
new set of claims and to establish a right to further exami-
nation by the primary examiner. An application under  37 
CFR 1.53(d), however, must be filed prior to payment of 
the issue fee.

For notation to be put on the file wrapper by the exam-
iner in the case of a continuation application, see  MPEP ? 
202.02, unless a petition under  37 CFR 1.313(b)(5) is 
granted in the prior application.

Use Form Paragraph 2.05 to remind applicant of possi-
ble continuation status.

?  2.05 Possible Status as Continuation

This application discloses and claims only subject matter disclosed in 
prior application no   [1], filed   [2], and names an inventor or inventors 
named in the prior application. Accordingly, this application may consti-
tute a continuation or division. Should applicant desire to obtain the bene-
fit of the filing date of the prior application, attention is directed to  35 
U.S.C. 120 and  37 CFR 1.78.

Examiner Note:

1.	This paragraph should only be used if it appears that the application 
may be a continuation, but priority has not been properly established.

2.	An application claiming the benefits of a provisional application 
under  35 U.S.C. 119(e) should not be called a "continuation'' of the provi-
sional application since the application will have its patent term calculated 
from its filing date, whereas an application filed under  35 U.S.C. 120, 
121, or 365(c) will have its patent term calculated from the date on which 
the earliest application was filed, provided a specific reference is made to 
the earlier filed application(s),  35 U.S.C. 154(a)(2) and (a)(3).

201.08	Continuation-in-Part Application  
[R-1]

A continuation-in-part is an application filed during the 
lifetime of an earlier nonprovisional application **, repeat-
ing some substantial portion or all of the earlier nonprovi-
sional application and adding matter not disclosed in the 
said earlier nonprovisional application. (In re Klein, 1930 
C.D. 2, 393 O.G. 519 (Comm'r Pat. 1930)). The continua-
tion-in-part application may only be filed under  37 CFR 
1.53(b).

A continuation-in-part application CANNOT be filed as 
a continued prosecution application (CPA) under  37 CFR 
1.53(d).

An application claiming the benefits of a provisional 
application under  35 U.S.C. 119(e) should not be called a 
"continuation-in-part'' of the provisional application since 
the application will have its patent term calculated from its 
filing date, whereas an application filed under  35 U.S.C. 
120, 121, or 365(c) will have its patent term calculated 
from the date on which the earliest application was filed, 
provided a specific reference is made to the earlier filed 
application(s),  35 U.S.C. 154(a)(2) and (a)(3).

The mere filing of a continuation-in-part does not itself 
create a presumption that the applicant acquiesces in any 
rejections which may be outstanding in the copending 
national nonprovisional application or applications upon 
which the continuation-in-part application relies for bene-
fit.

A continuation-in-part filed by a sole applicant may also 
derive from an earlier joint application showing a portion 
only of the subject matter of the later application, subject to 
the conditions set forth in  35 U.S.C. 120 and  37 CFR 1.78. 
Subject to the same conditions, a joint continuation-in-part 
application may derive from an earlier sole application.

Unless the filing date of the earlier nonprovisional appli-
cation is actually needed, for example, in the case of an 
interference or to overcome a reference, there is no need for 
the Office to make a determination as to whether the 
requirement of  35 U.S.C. 120, that the earlier nonprovi-
sional application discloses the invention of the second 
application in the manner provided by the first paragraph of  
35 U.S.C. 112, is met and whether a substantial portion of 
all of the earlier nonprovisional application is repeated in 
the second application in a continuation-in-part situation. 
Accordingly, an alleged continuation-in-part application 
should be permitted to claim the benefit of the filing date of 
an earlier nonprovisional application if the alleged continu-
ation-in-part application complies with the following for-
mal requirements of  35 U.S.C. 120:

(A)	The first application and the alleged continuation-
in-part application were filed with at least one common 
inventor;

(B)	The alleged continuation-in-part application was 
"filed before the patenting or abandonment of or termina-
tion of proceedings on the first application or an application 
similarly entitled to the benefit of the filing date of the first 
application"; and 

(C)	The alleged continuation-in-part application "con-
tains or is amended to contain a specific reference to the 
earlier filed application."

For notation to be put on the file wrapper by the exam-
iner in the case of a continuation-in-part application see  
MPEP ? 202.02.  See  MPEP ? 708 for order of examina-
tion.

Use Form Paragraph 2.06 to remind applicant of possi-
ble continuation-in-part status.

?  2.06 Possible Status as Continuation-in-Part

This application repeats a substantial portion of prior Application No. 
[1], filed [2], and adds and claims additional disclosure not presented in 
the prior application.  Since this application names an inventor or inven-
tors named in the prior application, it may constitute a continuation-in-part 
of the prior application.  Should applicant desire to obtain the benefit of 
the filing date of the prior application, attention is directed to  35 U.S.C. 
120 and  37 CFR 1.78.

Examiner Note:

1.	This paragraph should only be used when it appears that the applica-
tion may qualify as a continuation-in-part, but no priority claim has been 
perfected.

2.	An application claiming the benefits of a provisional application 
under  35 U.S.C. 119(e) should not be called a "continuation" of the provi-
sional application since the application will have its patent term calculated 
from its filing date, whereas an application filed under  35 U.S.C. 120, 
121, or 365(c) will have its term calculated from the date on which the ear-
liest application was filed, provided a specific reference is made to the ear-
lier filed application(s),  35 U.S.C. 154(a)(2) and (a)(3).

201.09	Substitute Application 

The use of the term "Substitute" to designate any appli-
cation which is in essence the duplicate of an application by 
the same applicant abandoned before the filing of the later 
application, finds official recognition in the decision Ex 
parte Komenak, 1940 C.D. 1, 512 O.G. 739 (Comm'r Pat. 
1940). Current practice does not require applicant to insert 
in the specification reference to the earlier application; 
however, attention should be called to the earlier applica-
tion. The notation on the file wrapper (see  MPEP ? 202.02) 
that one application is a "Substitute" for another is printed 
in the heading of the patent copies. See  MPEP ? 202.02.

As is explained in  MPEP ? 201.11, a "Substitute" does 
not obtain the benefit of the filing date of the prior applica-
tion.

Use Form Paragraph 2.07 to remind applicant of possi-
ble substitute status.

?  2.07 Definition of a Substitute

Applicant refers to this application as a "substitute" of Application No. 
[1], filed   [2].  The use of the term "substitute" to designate an application 
which is in essence the duplicate of an application by the same applicant 
abandoned before the filing of the later case finds official recognition in 
the decision, Ex parte Komenak, 1940 C.D. 1, 512 O.G. 739 (Comm'r Pat. 
1940).  The notation on the file wrapper (See  MPEP ? 202.02) that one 
case is a "substitute" for another is printed in the heading of the patent 
copies.  A "substitute" does not obtain the benefit of the filing date of the 
prior application.  

201.10	Refile 

No official definition has been given the term "Refile," 
though it is sometimes used as an alternative for the term 
"Substitute."

If the applicant designates his or her application as 
"Refile" and the examiner finds that the application is in 
fact a duplicate of a former application by the same party 
which was abandoned prior to the filing of the second 
application, the examiner should require the substitution of 
the word "substitute" for "refile", since the former term has 
official recognition.

Use Form Paragraph 2.08 to remind applicant of possi-
ble refile status.

?  2.08 Definition of a Refile

It is noted that applicant refers to this application as a "refile."  No offi-
cial definition has been given the term "refile," though it is sometimes 
used as an alternative for the term "substitute."  Since this application 
appears to be in fact a duplicate of a former application which was aban-
doned prior to the filing of the second case, the substitution of the word 
"substitute" for "refile" is required since the term "substitute" has official 
recognition.  Applicant is required to make appropriate corrections.

201.11	Continuity Between Applications: 
When Entitled to Filing Date [R-1]

Under certain circumstances an application for patent is 
entitled to the benefit of the filing date of a prior nonprovi-
sional application or provisional application which has at 
least one common inventor. The conditions are specified in  
35 U.S.C. 120 and  35 U.S.C. 119(e).

35 U.S.C. 120.  Benefit of earlier filing date in the United States.

An application for patent for an invention disclosed in the manner pro-
vided by the first paragraph of section 112 of this title in an application 
previously filed in the United States, or as provided by section 363 of this 
title, which is filed by an inventor or inventors named in the previously 
filed application shall have the same effect, as to such invention, as though 
filed on the date of the prior application, if filed before the patenting or 
abandonment of or termination of proceedings on the first application or 
on an application similarly entitled to the benefit of the filing date of the 
first application and if it contains or is amended to contain a specific refer-
ence to the earlier filed application.

35 U.S.C. 119.  Benefit of earlier filing date; right of priority.

*****

**>

(e)(1)	An application for patent filed under section 111(a) or section 
363 of this title for an invention disclosed in the manner provided by the 
first paragraph of section 112 of this title in a provisional application filed 
under section 111(b) of this title, by an inventor or inventors named in the 
provisional application, shall have the same effect, as to such invention, as 
though filed on the date of the provisional application filed under section 
111(b) of this title, if the application for patent filed under section 111(a) 
or section 363 of this title is filed not later than 12 months after the date on 
which the provisional application was filed and if it contains or is 
amended to contain a specific reference to the provisional application.

(2)	A provisional application filed under section 111(b) of this 
title may not be relied upon in any proceeding in the Patent and Trademark 
Office unless the fee set forth in subparagraph (A) or (C) of section 
41(a)(1) of this title has been paid.

(3)	If the day that is 12 months after the filing date of a provi-
sional application falls on a Saturday, Sunday, or Federal holiday within 
the District of Columbia, the period of pendency of the provisional appli-
cation shall be extended to the next succeeding secular or business day.<

There are four conditions for receiving the benefit of an 
earlier filing date under  35 U.S.C. 120 or under  35 U.S.C. 
119(e).

(A)	The second application must be an application for 
a patent for an invention which is also disclosed in the first 
application (the parent or original nonprovisional applica-
tion or provisional application); the disclosure of the inven-
tion in the first application and in the second application 
must be sufficient to comply with the requirements of the 
first paragraph of  35 U.S.C. 112. See Transco Prods., Inc. 
v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 
1077 (Fed. Cir. 1994).

Form Paragraphs 2.09 and 2.10 should be used where 
the disclosure of the second application is not for an inven-
tion disclosed in the first application.

?  2.09 Heading for Conditions for Domestic Priority Under 35 
U.S.C. 119(e) or 120

Applicant has not complied with one or more conditions for receiving 
the benefit of an earlier filing date under 35 U.S.C. [1] as follows:

Examiner Note:

1.	In bracket 1, insert either or both --119(e)-- or --120--.

2.	One or more of the following form paragraphs 2.10 to 2.12 must fol-
low depending upon the circumstances.

?  2.10 Disclosure Must Be the Same

The second application must be an application for a patent for an 
invention which is also disclosed in the first application (the parent or pro-
visional application); the disclosure of the invention in the parent applica-
tion and in the second application must be sufficient to comply with the 
requirements of the first paragraph of  35 U.S.C. 112. See Transco Prod-
ucts, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 
(Fed. Cir. 1994).

Examiner Note:

1.	This paragraph must be preceded by heading paragraph 2.09.

2.	Form paragraph 2.29 should be used where the claim(s) of the non-
provisional application lack(s) support in the disclosure of the provisional 
application.

?  2.29 Domestic Priority Not Granted

Applicant's claim for domestic priority under  35 U.S.C. 119(e) is 
acknowledged.  However, the provisional application upon which priority 
is claimed fails to provide adequate support under  35 U.S.C. 112 for claim  
[1] of this application. [2]

Examiner Note:

1.	This form paragraph may be used when there is lack of support in 
the provisional application for the pending claims in the nonprovisional 
application.  

2.	In bracket 2, provide an explanation of lack of support.

(B)	The second application must be copending with 
the first application or with an application similarly entitled 
to the benefit of the filing date of the first application. With 
respect to provisional applications, **>effective November 
29, 1999, Public Law 106-113 amended 35 U.S.C.  
119(e)(2) to eliminate the copendency requirement for a 
nonprovisional application claiming benefit of a provi-
sional application. However, pursuant to 35 U.S.C.  
119(e)(1), the nonprovisional application must be filed not 
later than 12 months after the date on which the provisional 
application was filed. If the day that is 12 months after the 
filing date of a provisional application falls on a Saturday, 
Sunday, or Federal holiday within the District of Columbia, 
the period of pendency of the provisional application is 
extended to the next succeeding business day and the non-
provisional application may be filed on that next succeed-
ing business day. See 35 U.S.C.  119(e)(3) and MPEP ?  
201.04(b) and ? 505.<

(C)	The second application must contain a specific 
reference to the prior application(s) in the specification.

A request for a continued prosecution application 
(CPA) filed under  37 CFR 1.53(d) is itself the specific ref-
erence required by  35 U.S.C. 120 and  37 CFR 1.78(a)(2) 
to every application assigned the same application number 
identified in the request. (Note:  The CPA is assigned the 
same application number as the prior application.)  In a 
CPA, a specific reference in the first sentence of the specifi-
cation following the title to a prior application assigned the 
same application number is not required and should not be 
made.  No amendment in a CPA may delete the specific ref-
erence to the prior application assigned the same applica-
tion number. A specific reference to an application not 
assigned the same application number, but relied on for 
benefit under  35 U.S.C. 120 and  37 CFR 1.78(a)(2) is 
required.  Cross references to other related applications not 
assigned the same application as the CPA may be made 
when appropriate.

Form Paragraphs 2.09 and 2.12 are required to be used 
to indicate reference to the prior application.

?  2.12 Application Must Contain a Reference to Parent

An application in which the benefits of an earlier application are 
desired must contain a specific reference to the prior application(s) in the 
first sentence of the specification (37 CFR 1.78).

Examiner Note:

1.	This paragraph must be preceded by heading paragraph 2.09.

2.	This paragraph should not be used for a continued prosecution appli-
cation (CPA).  In a continued prosecution application (CPA) filed under  
37 CFR 1.53(d), a specific reference in the first sentence of the specifica-
tion to the prior application is not required and should not be made.  The 
specific reference requirement of  35 U.S.C. 120 is met by the transmittal 
request for the CPA which is considered to be part of the CPA application 
(37 CFR 1.53(d)(2)(iv) and (d)(7)).

(D)	The second application must be filed by an inven-
tor or inventors named in the previously filed application.

COPENDENCY

Copendency is defined in the clause which requires that 
the second application must be filed before (1) the patent-
ing, or (2) the abandonment of, or (3) the termination of 
proceedings in the first application. **>With respect to pro-
visional applications, Public Law 106-113 amended 35 
U.S.C.  119(e)(2) to eliminate the copendency requirement 
for a nonprovisional application claiming benefit of a pro-
visional application. 35 U.S.C.  119(e)(2) as amended by 
Public Law 106-113 is effective as of November 29, 1999 
and applies to any provisional applications filed on or after 
June 8, 1995 but has no effect on any patent which is the 
subject of litigation in an action commenced before 
November 29, 1999.<

Use Form Paragraphs 2.09 and 2.11 to indicate copen-
dency is required.

?  2.11 Application Must Be Copending With Parent

An application in which the benefits of an earlier application are 
desired must be copending with the prior application or with an applica-
tion similarly entitled to the benefit of the filing date of the prior applica-
tion.

Examiner Note:

This paragraph must be preceded by heading paragraph 2.09.

If the first application issues as a patent, it is sufficient 
for the second application to be copending with it if the sec-
ond application is filed on the same date, or before the date 
that the patent issues on the first application.  **>Thus, the 
second application may be filed under 37 CFR  1.53(b) 
while the first is still pending before the examiner, or is in 
issue, or even between the time the issue fee is paid and the 
patent issues. In view of the new patent publication pro-
cess, it is anticipated that utility patents will be published 
within four weeks of payment of the issue fee. Applicants 
are encouraged to file any continuing applications no later 
than the date the issue fee is paid, to avoid issuance of the 
first application before the continuing application is filed.<

If the first application is abandoned, the second applica-
tion must be filed before the abandonment in order for it to 
be copending with the first. The term "abandoned," refers 
to abandonment for failure to prosecute (MPEP ? 711.02), 
express abandonment (MPEP ? 711.01), and abandonment 
for failure to pay the issue fee (37 CFR 1.316).**

The expression "termination of proceedings" includes 
the situations when an application is abandoned or when a 
patent has been issued, and hence this expression is the 
broadest of the three.

After a decision by the Court of Appeals for the Federal 
Circuit in which the rejection of all claims is affirmed, pro-
ceedings are terminated on the date of receipt of the Court's 
certified copy of the decision by the Patent and Trademark 
Office. Continental Can Company, Inc. v. Schuyler, 168 
USPQ 625 (D.D.C. 1970). There are several other situa-
tions in which proceedings are terminated as is explained in  
MPEP ? 711.02(c).

When proceedings in an application are terminated, the 
application is treated in the same manner as an abandoned 
application, and the term "abandoned application" may be 
used broadly to include such applications.

The term "continuity" is used to express the relationship 
of copendency of the same subject matter in two different 
applications of the same inventor. The second application 
may be referred to as a continuing application when the 
first application is not a provisional application. Continuing 
applications include those applications which are called 
divisions, continuations, and continuations-in-part. As far 
as the right under the statute is concerned the name used is 
immaterial, the names being merely expressions developed 
for convenience. The statute is so worded that the first 
application may contain more than the second, or the sec-
ond application may contain more than the first, and in 
either case the second application is entitled to the benefit 
of the filing date of the first as to the common subject mat-
ter.

REFERENCE TO FIRST APPLICATION

The third requirement of the statute is that the second (or 
subsequent) application must contain a specific reference to 
the first application. This should appear as the first sentence 
of the specification following the title preferably as a sepa-
rate paragraph (37 CFR 1.78(a)). 

A request for a continued prosecution application (CPA) 
filed under  37 CFR 1.53(d) is itself the specific reference 
required by  35 U.S.C. 120 and  37 CFR 1.78(a)(2) to every 
application assigned the same application number identi-
fied in the request.  (Note:  The CPA is assigned the same 
application number as the prior application.)  In a CPA, a 
specific reference in the first sentence of the specification 
following the title to a prior application assigned the same 
application number is not required and should not be made.  
No amendment in a CPA may delete the specific reference 
to the prior application assigned the same application num-
ber.  A specific reference to an application not assigned the 
same application number, but relied on for benefit under  
35 U.S.C. 120 and  37 CFR 1.78(a)(2) is required.  Cross 
references to other related applications not assigned the 
same application as the CPA may be made when appropri-
ate.

When *>a< nonprovisional application >(other than a 
CPA)< is entitled under  35 U.S.C. 120 to an earlier U.S. 
effective filing date, a statement such as "This is a division 
(continuation, continuation-in-part) of Application No. ---, 
filed ---'' should appear as the first sentence of the descrip-
tion, except in the case of design applications where it 
should appear as set forth in  MPEP ? 1504.20.  >In the 
case of an application filed under 37 CFR  1.53(b) as a divi-
sion, continuation or continuation-in-part of a CPA, there 
should be only one reference to the series of applications 
assigned the same application number, with the filing date 
cited being that of the original noncontinued application.<  
Where a nonprovisional application is claiming the benefit 
under  35 U.S.C. 120 of a prior national stage application 
filed under  35 U.S.C. 371, a suitable reference would read 
"This application is a continuation of U.S. Application No. 
08/---, filed ---, which was the National Stage of Interna-
tional Application No. PCT/DE95/---, filed ---." When the 
nonprovisional application is entitled to an earlier U.S. 
effective filing date of one or more provisional applications 
under  35 U.S.C. 119(e), a statement such as "This applica-
tion claims the benefit of U.S. Provisional Application No. 
60/---, filed ---, and U.S. Provisional Application No. 60/ --
-, filed ---.'' should appear as the first sentence of the 
description. In addition, for an application which is claim-
ing the benefit under  35 U.S.C. 120 of a prior application, 
which in turn claims the benefit of a provisional application 
under  35 U.S.C. 119(e), a suitable reference would read, 
"This application is a continuation of U.S. Application No. 
08/---, filed ---, now abandoned, which claims the benefit 
of U.S. Provisional Application No. 60/---, filed ---.'' Status 
of nonprovisional parent applications (whether it is pat-
ented or abandoned) should also be included. If a parent 
application has become a patent, the expression, "Patent 
No. _ _ " should follow the filing date of the parent applica-
tion. If a parent application has become abandoned, the 
expression "abandoned" should follow the filing date of the 
parent application. In the case of design applications, it 
should appear as set forth in  MPEP ? 1504.20. In view of 
this requirement, the right to rely on a prior application 
may be waived or refused by an applicant by refraining 
from inserting a reference to the prior application in the 
specification of the later one.  If the examiner is aware of 
the fact that an application is a continuing application of a 
prior one, he or she should merely call attention to this in 
an Office action by using the wording of Form Paragraphs 
2.15 or 2.16.

?  2.15 Reference to Parent Application, 35 U.S.C. 119(e) or 120 
Benefit

If applicant desires priority under 35 U.S.C. [1] based upon a previ-
ously filed copending application, specific reference to the earlier filed 
application must be made in the instant application.  This should appear as 
the first sentence of the specification following the title, preferably as a 
separate paragraph.  The status of nonprovisional parent application(s) 
(whether patented or abandoned) should also be included.  If a parent 
application has become a patent, the expression "now Patent No. 
_______" should follow the filing date of the parent application.  If a par-
ent application has become abandoned, the expression "now abandoned" 
should follow the filing date of the parent application.

Examiner Note:

1.	In bracket 1, insert --119(e)-- or --120--.

2.	In a continued prosecution application (CPA) filed under  37 CFR 
1.53(d), a specific reference in the first sentence of the specification to the 
prior application is not required and should not be made. The specific ref-
erence requirement of  35 U.S.C. 120 is met by the transmittal request for 
the CPA which is considered to be part of the CPA application.  37 CFR 
1.53(d)(2)(iv) and (d)(7).

?  2.16 Reference to Copending Application

It is noted that this application appears to claim subject matter dis-
closed in prior copending Application No. [1], filed   [2].  A reference to 
the prior application must be inserted as the first sentence of the specifica-
tion of this application if applicant intends to rely on the filing date of the 
prior application under  35 U.S.C. 119(e) or 120.  See  37 CFR 1.78(a).  
Also, the current status of all nonprovisional parent applications refer-
enced should be included.

Examiner Note:

In a continued prosecution application (CPA) filed under  37 CFR 
1.53(d), a specific reference in the first sentence of the specification to the 
prior application is not required and should not be made. The specific ref-
erence requirement of  35 U.S.C. 120 is met by the transmittal request for 
the CPA which is considered to be part of the CPA application.  37 CFR 
1.53(d)(2)(iv) and (d)(7).

If the examiner is aware of a prior application he or she 
should note it in an Office action, as indicated above, but 
should not require the applicant to call attention to the prior 
application.

In an application filed under former  37 CFR 1.60 appli-
cant, in the amendment canceling the nonelected claims, 
should include directions to enter "This is a division (con-
tinuation) of application No. .........., filed ...................." as 
the first sentence. Where the applicant has inadvertently 
failed to do this the wording of Form Paragraph 2.17 
should be used. Where the application filed under former  
37 CFR 1.60 is otherwise ready for allowance, the exam-
iner should insert the quoted sentence by examiner's 
amendment.

Applications are sometimes filed with a division, contin-
uation, or continuation-in-part oath or declaration, in which 
the oath or declaration refers back to a prior application. If 
there is no reference in the specification, in such cases, the 
examiner should merely call attention to this fact in his or 
her Office action, utilizing the wording of Form Paragraph 
2.17.

?  2.17 Reference in Continuation/Divisional Applications Under 
Former 37 CFR 1.60

This application filed under former  37 CFR 1.60 lacks the necessary 
reference to the prior application.  A statement reading "This is a [1] of 
Application No. [2], filed [3]." should be entered following the title of the 
invention or as the first sentence of the specification.  Also, the current sta-
tus of all nonprovisional parent applications referenced should be 
included.

Examiner Note:

1.	In bracket 1, insert either --division-- or --continuation--.

2.	Use only in former  37 CFR 1.60 applications.  For File Wrapper 
Continuing applications under former  37 CFR 1.62, use form paragraph 
2.28.

3.	Do not use if the prior application is a provisional application.

4.	Do not use if the application is a continued prosecution application 
(CPA) filed under  37 CFR 1.53(d).

Where the applicant has inadvertently failed to make a 
reference to the parent application in an application filed 
under former  37 CFR 1.60 or 1.62 which is otherwise 
ready for issue, the examiner should insert the required ref-
erence by examiner's amendment.

Sometimes a pending application is one of a series of 
applications wherein the pending application is not copend-
ing with the first filed application but is copending with an 
intermediate application entitled to the benefit of the filing 
date of the first application. If applicant desires that the 
pending application have the benefit of the filing date of the 
first filed application he or she must, besides making refer-
ence in the specification to the intermediate application, 
also make reference in the specification to the first applica-
tion. See Hovlid v.   Asari, 305 F. 2d 747, 134 USPQ 162 
(9th Cir. 1962); and Sticker Indus. Supply Corp. v. Blaw-
Knox Co., 405 F.2d 90, 160 USPQ 177 (7th Cir. 1968).

There is no limit to the number of prior applications 
through which a chain of copendency may be traced to 
obtain the benefit of the filing date of the earliest of a chain 
of prior copending applications.   See   In re Henriksen, 399 
F2.d 253, 158 USPQ 224 (CCPA 1968). 

A second application which is not copending with the 
first application, which includes those called substitutes in  
MPEP ? 201.09, is not entitled to the benefit of the filing 
date of the prior application and the bars to the grant of a 
patent are computed from the filing date of the second 
application. An applicant is not required to refer to such 
applications in the specification of the later filed applica-
tion, but is required to otherwise call the examiner's atten-
tion to the earlier application if it or its contents or 
prosecution are material as defined in  37 CFR 1.56(b). If 
the examiner is aware of such a prior abandoned applica-
tion he or she should make a reference to it in an Office 
action in order that the record of the second application will 
show this fact.

If an applicant refers to a prior noncopending abandoned 
application in the specification, the manner of referring to it 
should make it evident that it was abandoned before filing 
the second.

For notations to be placed on the file wrapper in the case 
of continuing applications, see  MPEP ? 202.02 and  ? 
1302.09. 

Effective June 8, 1995, Public Law 103-465 amended  
35 U.S.C. 154 to change the term of a patent to 20 years 
measured from the filing date of the earliest U.S. applica-
tion for which benefit under  35 U.S.C. 120, 121, or 365(c) 
is claimed.  The 20-year patent term applies to all utility 
and plant patents issued on applications filed on or after 
June 8, 1995.  As a result of the 20-year patent term, it is 
expected, in certain circumstances, that applicants may 
cancel their claim to priority by amending the specification 
(no supplemental declaration is necessary) to delete any 
references to prior applications. In a continued prosecution 
application (CPA) filed under  37 CFR 1.53(d), no amend-
ment may delete the specific reference to a prior applica-
tion assigned the same application number.  (Note:  In the 
CPA, the request is the specific reference required by  35 
U.S.C. 120 and  37 CFR 1.78(a)(2) to every application 
assigned the same application number identified in the 
request.  Further, in a CPA, a specific reference in the first 
sentence of the specification following the title to a prior 
application assigned the same application number is not 
required and should not be made.) Upon entry of the 
amendment, the examiner must return the application to the 
Office of Initial Patent Examination (OIPE), accompanied 
by a completed OIPE Data Base Routing Slip, for correc-
tion of the file wrapper label and for updating the PALM 
data base.  For 09/ series applications, it will not be neces-
sary to forward the application to OIPE for correction of 
the parent application data in PALM.  The correction or 
entry of the data in the PALM data base can be made by 
technical support staff of the examining group. Upon entry 
of the data, a new PALM bib-data sheet should be printed 
and placed in the file wrapper. See also  MPEP ? 707.05 
and  ? 1302.09.

SAME INVENTOR OR INVENTORS

The statute also requires that the applications claiming 
benefit of the earlier filing date under  35 U.S.C. 119(e) or 
120 be filed by an inventor or inventors named in the previ-
ously filed application or provisional application.

WHEN NOT ENTITLED TO BENEFIT OF FILING 
DATE

Where the first application (a nonprovisional applica-
tion) is found to be fatally defective because of insufficient 
disclosure to support allowable claims, a second applica-
tion filed as a "continuation-in-part" of the first application 
to supply the deficiency is not entitled to the benefit of the 
filing date of the first application. Hunt Co. v.   Mallinck-
rodt Chemical Works, 177 F.2d 583, 587, 83 USPQ 277, 
281 (2d Cir. 1949) and cases cited therein.

Any claim in a continuation-in-part application which is 
directed solely to subject matter adequately disclosed under  
35 U.S.C. 112 in the parent nonprovisional application is 
entitled to the benefit of the filing date of the parent non-
provisional application. However, if a claim in a continua-
tion-in-part application recites a feature which was not 
disclosed or adequately supported by a proper disclosure 
under  35 U.S.C. 112 in the parent nonprovisional applica-
tion, but which was first introduced or adequately sup-
ported in the continuation-in-part application such a claim 
is entitled only to the filing date of the continuation-in-part 
application;   In re Chu, 66 F.3d 292, 36 USPQ2d 1089 
(Fed. Cir. 1995);   Transco Products, Inc. v. Performance 
Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 
1994); In re Von Lagenhoven, 458 F.2d 132, 136, 173 
USPQ 426, 429 (CCPA 1972); and Chromalloy American 
Corp. v.   Alloy Surfaces Co., Inc., 339 F. Supp. 859, 874, 
173 USPQ 295, 306 (D. Del. 1972).

By way of further illustration, if the claims of a continu-
ation-in-part application which are only entitled to the con-
tinuation-in-part filing date, "read on" such published, 
publicly used or sold, or patented subject matter (e.g., as in 
a genus- species relationship) a rejection under  35 U.S.C. 
102 would be proper. Cases of interest in this regard are as 
follows: Mendenhall v. Cedarapids Inc.,   5 F.3d 1557, 28 
USPQ2d 1081 (Fed. Cir. 1993); In re Lukach, 442 F.2d 967, 
169 USPQ 795 (CCPA 1971); In re Hafner, 410 F.2d 1403, 
161 USPQ 783 (CCPA 1969); In re Ruscetta, 255 F.2d 687, 
118 USPQ 101 (CCPA 1958); In re Steenbock, 83 F.2d 912, 
30 USPQ 45 (CCPA 1936); Ex parte Hageman, 179 USPQ 
747 (Bd. App. 1971)>.<

201.11(a)	Filing of Continuation or  
Continuation-in-Part Application 
During Pendency of International 
Application  Designating the 
United States  [R-1]

It is possible to file a U.S. national application under  35 
U.S.C. 111(a) and  37 CFR 1.53(b) during the pendency 
(prior to the abandonment) of an international application 
which designates the United States without completing the 
requirements for entering the national stage under  35 
U.S.C. 371(c).  >See MPEP ?1895.< The ability to take 
such action is based on provisions of the United States 
patent law.  35 U.S.C. 363 provides that "An international 
application designating the United States shall have the 
effect from its international filing date under article 11 of 
the treaty, of a national application for patent regularly filed 
in the Patent and Trademark Office...".  35 U.S.C. 371(d) 
indicates that failure to timely comply with the require-
ments of  35 U.S.C. 371(c) "shall be regarded as abandon-
ment by the parties thereof...". It is therefore clear that an 
international application which designates the United 
States has the effect of a pending U.S. application from the 
international application filing date until its abandonment 
as to the United States. The first sentence of  35 U.S.C. 
365(c) specifically provides that "In accordance with the 
conditions and requirements of section 120 of this title,... a 
national application shall be entitled to the benefit of the 
filing date of a prior international application designating 
the United States." The condition of  35 U.S.C. 120 relating 
to the time of filing requires the later application to be 
"filed before the patenting or abandonment of or termina-
tion of proceedings on the first application...". The filing of 
a continuation or continuation-in-part application of an 
international application may be useful to patent applicants 
where the oath or declaration required by  35 U.S.C. 
371(c)(4) cannot be filed as required by  37 CFR 1.494* or 
1.495. An applicant filing an application under  35 U.S.C. 
111(a) and  37 CFR 1.53(b) may obtain additional time to 
file the oath or declaration under  37 CFR 1.53(f) and 
1.136(a).

A continuing application under  35 U.S.C. 365(c) and 
120 must be filed before the abandonment or patenting of 
the prior nonprovisional application.  See  37 CFR 1.494 
and 1.495.

201.12	Assignment Carries Title 

Assignment of an original application carries title to any 
divisional, continuation, or reissue application stemming 
from the original application and filed after the date of 
assignment. See  MPEP ? 306.  When the assignment is in a 
provisional application, see  MPEP ? 306.01.

201.13	Right of Priority of Foreign 
Application  [R-1]

Under certain conditions and on fulfilling certain 
requirements, an application for patent filed in the United 
States may be entitled to the benefit of the filing date of a 
prior application filed in a foreign country, to overcome an 
intervening reference or for similar purposes. The condi-
tions are specified in  35 U.S.C. 119(a)-(d).

35 U.S.C. 119.  Benefit of earlier filing date; right of priority.

(a)	An application for patent for an invention filed in this country 
by any person who has, or whose legal representatives or assigns have, 
previously regularly filed an application for a patent for the same inven-
tion in a foreign country which affords similar privileges in the case of 
applications filed in the United States or to citizens of the United States 
>or in a WTO member country<, shall have the same effect as the same 
application would have if filed in this country on the date on which the 
application for patent for the same invention was first filed in such foreign 
country, if the application in this country is filed within twelve months 
from the earliest date on which such foreign application was filed; but no 
patent shall be granted on any application for patent for an invention 
which had been patented or described in a printed publication in any coun-
try more than one year before the date of the actual filing of the applica-
tion in this country, or which had been in public use or on sale in this 
country more than one year prior to such filing.

(b)	No application for patent shall be entitled to this right of priority 
unless a claim therefor and a certified copy of the original foreign applica-
tion, specification, and drawings upon which it is based are filed in the 
Patent and Trademark Office before the patent is granted, or at such time 
during the pendency of the application as required by the Commissioner 
not earlier than six months after the filing of the application in this coun-
try.  Such certification shall be made by the patent office of the foreign 
country in which filed and show the date of the application and of the fil-
ing of the specification and other papers.  The Commissioner may require 
a translation of the papers filed if not in the English language and such 
other information as he deems necessary. 

(c)	In like manner and subject to the same conditions and require-
ments, the right provided in this section may be based upon a subsequent 
regularly filed application in the same foreign country instead of the first 
filed foreign application, provided that any foreign application filed prior 
to such subsequent application has been withdrawn, abandoned, or other-
wise disposed of, without having been laid open to public inspection and 
without leaving any rights outstanding, and has not served, nor thereafter 
shall serve, as a basis for claiming a right of priority.

(d)	Applications for inventors' certificates filed in a foreign country 
in which applicants have a right to apply, at their discretion, either for a 
patent or for an inventor's certificate shall be treated in this country in the 
same manner and have the same effect for purpose of the right of priority 
under this section as applications for patents, subject to the same condi-
tions and requirements of this section as apply to applications for patents, 
provided such applicants are entitled to the benefits of the Stockholm 
Revision of the Paris Convention at the time of such filing.

*****

37 CFR 1.55.  Claim for foreign priority.

(a)	An applicant in a nonprovisional application may claim the ben-
efit of the filing date of one or more prior foreign applications under the 
conditions specified in  35 U.S.C. 119(a) through (d) and 172.  The claim 
to priority need be in no special form and may be made by the attorney or 
agent if the foreign application is referred to in the oath or declaration as 
required by ? 1.63.  The claim for priority and the certified copy of the for-
eign application specified in  35 U.S.C. 119(b) must be filed in the case of 
an interference (? 1.630), when necessary to overcome the date of a refer-
ence relied upon by the examiner, when specifically required by the exam-
iner, and in all other situations, before the patent is granted.  If the claim 
for priority or the certified copy of the foreign application is filed after the 
date the issue fee is paid, it must be accompanied by a petition requesting 
entry and by the fee set forth in ? 1.17(i).  If the certified copy is not in the 
English language, a translation need not be filed except in the case of 
interference; or when necessary to overcome the date of a reference relied 
upon by the examiner; or when specifically required by the examiner, in 
which event an English language translation must be filed together with a 
statement that the translation of the certified copy is accurate.

*****

The period of 12 months specified in this section is 6 
months in the case of designs,  35 U.S.C. 172. See  MPEP ? 
1504.10.

The conditions, for benefit of the filing date of a prior 
application filed in a foreign country, may be listed as fol-
lows:

(A)	The foreign application must be one filed in "a 
foreign country which affords similar privileges in the case 
of applications filed in the United States or to citizens of 
the United States >or in a WTO member country<."

(B)	The foreign application must have been filed by 
the same applicant (inventor) as the applicant in the United 
States, or by his or her legal representatives or assigns.

(C)	The application, or its earliest parent United States 
application under  35 U.S.C. 120, must have been filed 
within 12 months from the date of the earliest foreign filing 
in a "recognized" country as explained below.

(D)	The foreign application must be for the same 
invention as the application in the United States.

(E)	In the case where the basis of the claim is an appli-
cation for an inventor's certificate, the requirements of  37 
CFR 1.55(b) must also be met.

Applicant may be informed of possible priority rights 
under  35 U.S.C. 119(a)-(d) by using the wording of Form 
Paragraph 2.18.

?  2.18 Right of Priority Under 35 U.S.C. 119(a)-(d) 

Applicant is advised of possible benefits under  35 U.S.C. 119(a)-(d), 
wherein an application for patent filed in the United States may be entitled 
to the benefit of the filing date of a prior application filed in a foreign 
country.

RECOGNIZED COUNTRIES OF FOREIGN FILING

The right to rely on a foreign application is known as the 
right of priority in international patent law and this phrase 
has been adopted in the U.S. statute.  The right of priority 
originated in a multilateral treaty of 1883, to which the 
United States adhered in 1887, known as the Paris Conven-
tion for the Protection of Industrial Property (Paris Conven-
tion). The treaty is administered by the World Intellectual 
Property Organization (WIPO) at Geneva, Switzerland. 
This treaty has been revised several times, the latest revi-
sion in effect being written in Stockholm in July 1967 
(copy at Appendix P of this Manual). Articles 13-30 of the 
Stockholm Revision became effective on September 5, 
1970. Articles 1-12 of the Stockholm Revision became 
effective on August 25, 1973. One of the many provisions 
of the treaty requires each of the adhering countries to 
accord the right of priority to the nationals of the other 
countries and the first United States statute relating to this 
subject was enacted to carry out this obligation. There is 
another treaty between the United States and some Latin 
American countries which also provides for the right of pri-
ority. A foreign country may also provide for this right by 
reciprocal legislation.

The United States and Taiwan signed an agreement on 
priority for patent and trademark applications on April 10, 
1996, and Taiwan  is now a country for which the right of 
priority is recognized in the United States.  Applicants 
seeking patent protection in the United States may avail 
themselves of the right of priority based on patent applica-
tions filed in Taiwan, on or after April 10, 1996.

**

An application for patent filed in the United States on or 
after January 1, 1996, by any person who has, or whose 
legal representatives or assigns have, previously filed an 
application for patent in Thailand shall have the benefit of 
the filing date in Thailand in accordance with  35 U.S.C. 
119 and 172.

NOTE:  Following is a list of countries with respect to 
which the right of priority referred to in  35 U.S.C. 119(a)-
(d) has been recognized. The letter "I" following the name 
of the country indicates that the basis for priority in the case 
of these countries is the Paris Convention for the Protection 
of Industrial Property (613 O.G. 23, 53 Stat. 1748). The let-
ter "P" after the name of the country indicates the basis for 
priority of these countries is the Inter-American Conven-
tion relating to Inventions, Patents, Designs, and Industrial 
Models, signed at Buenos Aires, August 20, 1910 (207 
O.G. 935, 38 Stat. 1811). The letter "L" following the name 
of the country indicates the basis for priority is reciprocal 
legislation in the particular country.

Albania (I),

Algeria (I),

Argentina (I),

Armenia (I),

Australia (I),

Austria (I),

Azerbaijan (I),

Bahamas (I),

Bahrain (I),

Bangladesh (I),

Barbados (I),

Belarus (I),

Belgium (I),

Benin (I),

Bolivia (I,P),

Bosnia and Herzegovina (I),

Brazil (I, P),

Bulgaria (I),

Burkina Faso (I),

Burundi (I),

Cameroon (I),

Canada (I),

Central African Republic (I),

Chad  (I),

Chile (I),

China  (I),

Colombia (I),

Congo (I),

Costa Rica (I,P),

Cote d'Ivoire (I),

Croatia (I),

Cuba (I, P),

Cyprus (I),

Czech Republic (I),

Democratic People's Republic of Korea (I),

Democratic Republic of the Congo (I),

Denmark (I),

Dominican Republic (I,P),

Ecuador (P),

Egypt (I),

El Salvador (I),

Equatorial Guinea (I),

Estonia (I),

Finland (I),

France (I),

Gabon (I),

Gambia (I),

Georgia (I),

Germany (I),

Ghana (I),

Greece (I),

Guinea (I),

Guinea-Bissau (I),

Guatemala (P),

Guyana (I),

Haiti (I,P),

Holy See (I),

Honduras (I,P),

Hungary (I),

Iceland (I),

India (*>I<),

Indonesia (I),

Iran (Islamic Republic of) (I),

Iraq (I),

Ireland (I),

Israel (I),

Italy (I),

Japan (I),

Jordan (I),

Kazakstan (I),

Kenya (I),

Korea, Republic of (I),

Kyrgyzstan (I),

Latvia (I),

Lebanon (I),

Lesotho (I),

Liberia (I),

Libya (I),

Liechtenstein (I),

Lithuania (I),

Luxembourg (I),

Madagascar (I),

Malawi (I),

Malaysia (I),

Mali (I),

Malta (I),

Mauritania (I),

Mauritius (I),

Mexico (I),

Moldova, Republic of (I),

Monaco (I),

Mongolia (I),

Morocco (I),

Netherlands (I),

New Zealand (I),

Nicaragua (I,P),

Niger (I),

Nigeria (I),

Norway (I),

Panama (I),

Paraguay (I,P),

Peru (I),

Philippines (I),

Poland (I),

Portugal (I),

Romania (I),

Russian Federation (I),

Rwanda (I),

Saint Kitts and Nevis (I),

Saint Lucia (I),

Saint Vincent and the Grenadines (I),

San Marino (I),

Senegal, Republic of (I),

Sierra Leone (I),

Singapore (I),

Slovakia (I),

Slovenia (I),

South Africa (I),

Spain (I),

Sri Lanka (I),

Sudan (I),

Suriname (I),

Swaziland (I),

Sweden (I),

Switzerland (I),

Syria (I),

Taiwan (L),

Tajikistan (I),

Tanzania, United Republic of (I),

Thailand (L),

The former Yugoslav Republic of Macedonia (I),

Togo (I),

Trinidad and Tobago (I),

Tunisia (I),

Turkey (I),

Turkmenistan (I),

Uganda (I),

Ukraine (I),

United Arab Emirates (I),

United Kingdom (I),

Uruguay (I, P),

Uzbekistan (I),

Venezuela (I),

Viet Nam (I),

Yugoslavia (I),

Zambia (I),

Zimbabwe (I).

Twelve African Countries have joined together to create 
a common patent office and to promulgate a common law 
for the protection of inventions, trademarks, and designs. 
The common patent office is called "Organisation Africain 
de la Propriete Intellectuelle" (OAPI) and is located in 
Yaounde, Cameroon. The English title is "African Intellec-
tual Property Organization." The member countries using 
the OAPI Patent Office are Benin, Cameroon, Central Afri-
can Republic, Chad, Congo, Gabon, Cote d'Ivoire, Maurita-
nia, Niger, Senegal, Republic of Togo, and Burkina Faso. 
Since all these countries adhere to the Paris Convention for 
the Protection of Industrial Property, priority under  35 
U.S.C. 119(a)-(d) may be claimed of an application filed in 
the OAPI Patent Office.

If any applicant asserts the benefit of the filing date of an 
application filed in a country not on this list, the examiner 
should inquire of the Office of Legislation and Interna-
tional Affairs to determine if there has been any change in 
the status of that country.  It should be noted that the right is 
based on the country of the foreign filing and not upon the 
citizenship of the applicant.

RIGHT OF PRIORITY (35 U.S.C. 119(a)-(d) AND 365) 
BASED ON A FOREIGN APPLICATION FILED 
UNDER A BILATERAL OR MULTILATERAL 
TREATY

Under Article 4A of the Paris Convention for the Protec-
tion of Industrial Property a right of priority may be based 
either on an application filed under the national law of a 
foreign country adhering to the Convention or on a foreign 
application filed under a bilateral or multilateral treaty con-
cluded between two or more such countries. Examples of 
such treaties are The Hague Agreement Concerning the 
International Deposit of Industrial Designs, the Benelux 
Designs Convention, and the Libreville Agreement of Sep-
tember 13, 1962, relating to the creation of an African 
Intellectual Property Office. The Convention on the Grant 
of European Patents and the Patent Cooperation Treaty 
(MPEP ? 201.13(b)) are further examples of such treaties.

A.	The Priority Claim

In claiming priority of a foreign application previously 
filed under such a treaty, certain information must be sup-
plied to the Patent and Trademark Office. In addition to the 
application number and the date of the filing of the applica-
tion, the following information is required: (1) the name of 
the treaty under which the application was filed and (2) the 
name and location of the national or intergovernmental 
authority which received such application.

B.	Certification of the Priority Papers

35 U.S.C. 119(b) requires the applicant to furnish a certi-
fied copy of priority papers. Certification by the authority 
empowered under a bilateral or multilateral treaty to 
receive applications which give rise to a right of priority 
under Article 4A(2) of the Paris Convention will be 
deemed to satisfy the certification requirement.

C.	Identity of Inventors

The inventors of the U.S. nonprovisional application and 
of the foreign application must be the same, for a right of 
priority does not exist in the case of an application of 
inventor A in the foreign country and inventor B in the 
United States, even though the two applications may be 
owned by the same party.  However, the application in the 
foreign country may have been filed by the assignee, or by 
the legal representative or agent of the inventor which is 
permitted in some foreign countries, rather than by the 
inventor himself, but in such cases the name of the inventor 
is usually given in the foreign application on a paper filed 
therein. An indication of the identity of inventors made in 
the oath or declaration accompanying the U.S. nonprovi-
sional application by identifying the foreign application 
and stating that the foreign application had been filed by 
the assignee, or the legal representative, or agent, of the 
inventor, or on behalf of the inventor, as the case may be, is 
acceptable. Joint inventors A and B in a nonprovisional 
application filed in the United States Patent and Trademark 
Office may properly claim the benefit of an application 
filed in a foreign country by A and another application filed 
in a foreign country by B, i.e., A and B may each claim the 
benefit of their foreign filed applications. See  MPEP ? 
605.07.

D.	Time for Filing U.S. Nonprovisional Application

The United States nonprovisional application, or its ear-
liest parent nonprovisional application under  35 U.S.C. 
120, must have been filed within 12 months of the earliest 
foreign filing. In computing this 12 months, the first day is 
not counted; thus, if an application was filed in Canada on 
January 3, 1983, the U.S. nonprovisional application may 
be filed on January 3, 1984. The Convention specifies in 
Article 4C(2) that "the day of filing is not counted in this 
period." (This is the usual method of computing periods, 
for example a 6-month period for reply to an Office action 
dated January 2 does not expire on July 1, but the reply 
may be made on July 2.) If the last day of the 12 months is 
a Saturday, Sunday, or Federal holiday within the District 
of Columbia, the U.S. nonprovisional application is in time 
if filed on the next succeeding business day; thus, if the for-
eign application was filed on September 4, 1981, the U.S. 
nonprovisional application is in time if filed on September 
7, 1982, since September 4, 1982, was a Saturday and Sep-
tember 5, 1982 was a Sunday and September 6, 1982 was a 
Federal holiday. Since January 1, 1953, the Office has not 
received applications on Saturdays and, in view of  35 
U.S.C. 21, and the Convention which provides "if the last 
day of the period is an official holiday, or a day on which 
the Office is not open for the filing of applications in the 
country where protection is claimed, the period shall be 
extended until the first following working day" (Article 
4C(3), if the 12 months expires on Saturday, the U.S. appli-
cation may be filed on the following Monday. Note Ex 
parte Olah, 131 USPQ 41 (Bd. App. 1960). See, e.g., 
Dubost v.   U.S. Patent and Trademark Office, 777 F.2d 
1561, 1562, 227 USPQ 977, 977 (Fed. Cir. 1985).

E.	Filing of Papers During Unscheduled Closings of 
the Patent and Trademark Office

37 CFR 1.9(h) provides that the definition of "Federal 
holiday within the District of Columbia" includes an offi-
cial closing of the Office. When the entire Patent and 
Trademark Office is officially closed for business for an 
entire day, for reasons due to adverse weather or other 
causes, the Office will consider each such day a "Federal 
holiday within the District of Columbia" under  35 U.S.C. 
21.  Any action or fee due on such a day may be taken, or 
fee paid, on the next succeeding business day the Office is 
open.  In addition, 37 CFR 1.6(a)(1) provides "[t]he Patent 
and Trademark Office is not open for the filing of corre-
spondence on any day that is a Saturday, Sunday or Federal 
holiday within the District of Columbia" to clarify that any 
day that is a Saturday, Sunday or Federal holiday within the 
District of Columbia is a day that the Patent and Trademark 
Office is not open for the filing of applications within the 
meaning of Article 4C(3) of the Paris Convention. Note 
further that in accordance with  37 CFR 1.6(a)(2), even 
when the Office is not open for the filing of correspondence 
on any day that is a Saturday, Sunday or Federal holiday 
within the District of Columbia, correspondence deposited 
as Express Mail with the USPS in accordance with  37 CFR 
1.10 will be considered filed on the date of its deposit, 
regardless of whether that date is a Saturday, Sunday or 
Federal holiday within the District of Columbia (under  35 
U.S.C. 21(b) or  37 CFR 1.7).

When the Patent and Trademark Office is open for busi-
ness during any part of a business day between 8:30 a.m. 
and 5:00 p.m., papers are due on that day even though the 
Office may be officially closed for some period of time dur-
ing the business day because of an unscheduled event. The 
procedures of  37 CFR 1.10 may be used for filing applica-
tions.

Information regarding whether or not the Office is offi-
cially closed on any particular day may be obtained by call-
ing (703) 308-4357 which transposes to (703) 308-HELP.

F.	First Foreign Application

The 12 months is from earliest foreign filing except as 
provided in 35 U.S.C 119(c). If an inventor has filed an 
application in France on January 4, 1982, and an identical 
application in the United Kingdom on March 3, 1982, and 
then files in the United States on February 2, 1983, the 
inventor is not entitled to the right of priority at all; the 
inventor would not be entitled to the benefit of the date of 
the French application since this application was filed more 
than twelve months before the U.S. application, and the 
inventor would not be entitled to the benefit of the date of 
the United Kingdom application since this application is 
not the first one filed. Ahrens v.   Gray, 1931 C.D. 9, 402 
O.G. 261 (Bd. App. 1929).  If the first foreign application 
was filed in a country which is not recognized with respect 
to the right of priority, it is disregarded for this purpose.

Public Law 87-333 modified  35 U.S.C. 119(c) to extend 
the right of priority to "subsequent" foreign applications if 
one earlier filed had been withdrawn, abandoned, or other-
wise disposed of, under certain conditions.

The United Kingdom and a few other countries have a 
system of "post-dating" whereby the filing date of an appli-
cation is changed to a later date. This "post-dating" of the 
filing date of the application does not affect the status of the 
application with respect to the right of priority; if the origi-
nal filing date is more than one year prior to the U.S. filing 
no right of priority can be based upon the application. See 
In re Clamp, 151 USPQ 423 (Comm'r Pat. 1966).

If an applicant has filed two foreign applications in rec-
ognized countries, one outside the year and one within the 
year, and the later application discloses additional subject 
matter, a claim in the U.S. application specifically limited 
to the additional disclosure would be entitled to the date of 
the second foreign application since this would be the first 
foreign application for that subject matter.

EFFECT OF RIGHT OF PRIORITY

The right to rely on the foreign filing extends to over-
coming the effects of intervening references or uses, but 
there are certain restrictions. For example, the 1 year bar of  
35 U.S.C. 102(b) dates from the U.S. filing date and not 
from the foreign filing date; thus if an invention was 
described in a printed publication, or was in public use in 
this country, in November 1981, a foreign application filed 
in January 1982, and a U.S. application filed in December 
1982, granting a patent on the U.S. application is barred by 
the printed publication or public use occurring more than 
one year prior to its actual filing in the United States. 

The right of priority can be based upon an application in 
a foreign country for a so-called "utility model," called 
Gebrauchsmuster in Germany. 

201.13(a)	Right of Priority Based Upon an 
Application for an Inventor's 
Certificate

37 CFR 1.55.  Claim for foreign priority.

*****

(b)	An applicant in a nonprovisional application may under certain 
circumstances claim priority on the basis of one or more applications for 
an inventor's certificate in a country granting both inventor's certificates 
and patents.  To claim the right of priority on the basis of an application 
for an inventor's certificate in such a country under  35 U.S.C. 119(d), the 
applicant when submitting a claim for such right as specified in paragraph 
(a) of this section, shall include an affidavit or declaration. The affidavit or 
declaration must include a specific statement that, upon an investigation, 
he or she is satisfied that to the best of his or her knowledge, the applicant, 
when filing the application for the inventor's certificate, had the option to 
file an application for either a patent or an inventor's certificate as to the 
subject matter of the identified claim or claims forming the basis for the 
claim of priority.

An inventor's certificate may form the basis for rights of 
priority under  35 U.S.C. 119(d) only when the country in 
which they are filed gives to applicants, at their discretion, 
the right to apply, on the same invention, either for a patent 
or for an inventor's certificate. The affidavit or declaration 
specified under  37 CFR 1.55(b) is only required for the 
purpose of ascertaining whether, in the country where the 
application for an inventor's certificate originated, this 
option generally existed for applicants with respect to the 
particular subject matter of the invention involved. The 
requirements of  35 U.S.C. 119(d) and  37 CFR 1.55(b) are 
not intended, however, to probe into the eligibility of the 
particular applicant to exercise the option in the particular 
priority application involved.

It is recognized that certain countries that grant inven-
tors' certificates also provide by law that their own nation-
als who are employed in state enterprises may only receive 
inventors' certificates and not patents on inventions made in 
connection with their employment. This will not impair 
their right to be granted priority in the United States based 
on the filing of the inventor's certificate.

Accordingly, affidavits or declarations filed pursuant to  
37 CFR 1.55(b) need only show that in the country in 
which the original inventor's certificate was filed, appli-
cants generally have the right to apply at their own option 
either for a patent or an inventor's certificate as to the par-
ticular subject matter of the invention. 

Priority rights on the basis of an inventor's certificate 
application will be honored only if the applicant had the 
option or discretion to file for either an inventor's certificate 
or a patent on his or her invention in his or her home coun-
try. Certain countries which grant both patents and inven-
tor's certificates issue only inventor's certificates on certain 
subject matter, generally pharmaceuticals, foodstuffs, and 
cosmetics.

To ensure compliance with the treaty and statute,  37 
CFR 1.55(b) provides that at the time of claiming the bene-
fit of priority for an inventor's certificate, the applicant or 
his or her attorney must submit an affidavit or declaration 
stating that the applicant when filing his or her application 
for the inventor's certificate had the option either to file for 
a patent or an inventor's certificate as to the subject matter 
forming the basis for the claim of priority.

Effective Date

37 CFR 1.55(b) originally went into effect on August 25, 
1973, which is the date on which the international treaty 
entered into force with respect to the United States. The 
rights of priority based on an earlier filed inventor's certifi-
cate shall be granted only with respect to U.S. patent appli-
cations where both the earlier application and the U.S. 
patent application were filed in their respective countries 
following this effective date. 

201.13(b)	Right of Priority Based Upon an  
International Application Filed 
Under the Patent Cooperation 
Treaty 

35 U.S.C. 365.  Right of priority; benefit of the filing date of a 
prior application. 

(a)	In accordance with the conditions and requirements of subsec-
tions (a) through (d) of section 119 of this title, a national application shall 
be entitled to the right of priority based on a prior filed international appli-
cation which designated at least one country other than the United States.

(b)	In accordance with the conditions and requirements of section 
119(a) of this title and the treaty and the Regulations, an international 
application designating the United States shall be entitled to the right of 
priority based on a prior foreign application, or a prior international appli-
cation designating at least one country other than the United States.

(c)	In accordance with the conditions and requirements of section 
120 of this title, an international application designating the United States 
shall be entitled to the benefit of the filing date of a prior national applica-
tion or a prior international application designating the United States, and 
a national application shall be entitled to the benefit of the filing date of a 
prior international application designating the United States. If any claim 
for the benefit of an earlier filing date is based on a prior international 
application which designated but did not originate in the United States, the 
Commissioner may require the filing in the Patent and Trademark Office 
of a certified copy of such application together with a translation thereof 
into the English language, if it was filed in another language.

35 U.S.C. 365(a) provides that a national application 
shall be entitled to the right of priority based on a prior 
international application of whatever origin, which desig-
nated any country other than, or in addition to, the United 
States. Of course, the conditions prescribed by section 
119(a)-(d) of title 35 U.S.C., which deals with the right of 
priority based on earlier filed foreign applications, must be 
complied with.

35 U.S.C. 365(b) provides that an international applica-
tion designating the United States shall be entitled to the 
right of priority of a prior foreign application which may 
either be another international application or a regularly 
filed foreign application. The international  application 
upon which the claim of priority is based can either have 
been filed in the United States or a foreign country; how-
ever, it must contain the designation of at least one country 
other than, or in addition to, the United States.

As far as the actual place of filing is concerned, for the 
purpose of  35 U.S.C. 365(a) and (b) and  35 U.S.C. 119(a)-
(d), an international application designating a country is 
considered to be a national application regularly filed in 
that country on the international filing date irrespective of 
whether it was physically filed in that country, in another 
country, or in an intergovernmental organization acting as 
Receiving Office for a country.

An international application which seeks to establish the 
right of priority will have to comply with the conditions 
and requirements as prescribed by the Treaty and the PCT 
Regulations, in order to avoid rejection of the claim to the 
right of priority. Reference is especially made to the 
requirement of making a declaration of the claim of priority 
at the time of filing of the international application (Article 
8(1) of the Treaty and Rule 4.10 of the PCT Regulations) 
and the requirement of either filing a certified copy of the 
priority document with the international application, or 
submitting a certified copy of the priority document to the 
International Bureau at a certain time (Rule 17 of the PCT 
Regulations). The submission of the priority document to 
the International Bureau is only required in those instances 
where priority is based on an earlier filed foreign national 
application.

Thus, if the priority document is an earlier national 
application and did not accompany the international appli-
cation when filed with the Receiving Office, an applicant 
must submit such document to the International Bureau not 
later than 16 months after the priority date.  However, 
should an applicant request early processing of his interna-
tional application in accordance with Article 23(2) of the 
Treaty, the priority document would have to be submitted 
to the International Bureau at that time (Rule 17.1(a) of the 
PCT Regulations).  If priority is based on an earlier interna-
tional application, a copy does not have to be filed, either 
with the Receiving Office or the International Bureau, since 
the latter is already in possession of such international 
application.

The formal requirements for obtaining the right of prior-
ity under  35 U.S.C. 365 differ somewhat from those 
imposed by  35 U.S.C. 119(a)-(d), although the 1-year bar 
of  35 U.S.C. 102(b), as required by the last clause of sec-
tion 119(a) is the same. However, the substantive right of 
priority is the same, in that it is derived from Article 4 of 
the Paris Convention for the Protection of Industrial Prop-
erty (Article 8(2) of the Treaty).

35 U.S.C. 365(c) recognizes the benefit of the filing date 
of an earlier application under  35 U.S.C. 120.  Any inter-
national application designating the United States, whether 
filed with a Receiving Office in this country or abroad, and 
even though other countries may have also been desig-
nated, has the effect of a regular national application in the 
United States, as of the international filing date. As such, 
any later filed national application, or international applica-
tion designating the United States, may claim the benefit of 
the filing date of an earlier international application desig-
nating the United States, if the requirements and conditions 
of section 120 of title 35 U.S.C. are fulfilled. Under the 
same circumstances, the benefit of the earlier filing date of 
a national application may be obtained in a later filed inter-
national application designating the United States. In those 
instances, where the applicant relies on an international 
application designating, but not originating in, the United 
States the Commissioner may require submission of a copy 
of such application together with an English translation, 
since in some instances, and for various reasons, a copy of 
that international application or its translation may not oth-
erwise be filed in the Patent and Trademark Office.

PCT Rule 17.

The Priority Document

17.1.Obligation to Submit Copy of Earlier National or Interna-
tional Application

(a)	Where the priority of an earlier national or international applica-
tion is claimed under Article 8, a copy of that earlier application, certified 
by the authority with which it was filed ("the priority document"), shall, 
unless already filed with the receiving Office together with the interna-
tional application in which the priority claim is made, and subject to para-
graph (b), be submitted by the applicant to the International Bureau or to 
the receiving Office not later than 16 months after the priority date, pro-
vided that any copy of the said earlier application which is received by the 
International Bureau after the expiration of that time limit shall be consid-
ered to have been received by that Bureau on the last day of that time limit 
if it reaches it before the date of international publication of the interna-
tional application.

(b)	Where the priority document is issued by the receiving Office, 
the applicant may, instead of submitting the priority document, request the 
receiving Office to prepare and transmit the priority document to the Inter-
national Bureau. Such request shall be made not later than 16 months after 
the priority date and may be subjected by the receiving Office to the pay-
ment of a fee. 

(c)	If the requirements of neither of the two preceding paragraphs 
are complied with, any designated State may disregard the priority claim, 
provided that no designated Office shall disregard the priority claim 
before giving the applicant an opportunity to furnish the priority document 
within a time limit which shall be reasonable under the circumstances.

17.2.Availability of Copies 

(a)	Where the applicant has complied with Rule 17.1(a) or (b), the 
International Bureau shall, at the specific request of the designated Office, 
promptly but not prior to the international publication of the international 
application, furnish a copy of the priority document to that Office.  No 
such Office shall ask the applicant himself to furnish it with a copy.  The 
applicant shall not be required to furnish a translation to the designated 
Office before the expiration of the applicable time limit under Article 22.  
Where the applicant makes an express request to the designated Office 
under Article 23(2) prior to the international publication of the interna-
tional application, the International Bureau shall, at the specific request of 
the designated Office, furnish a copy of the priority document to that 
Office promptly after receiving it.

(b)	The International Bureau shall not make copies of the priority 
document available to the public prior to the international publication of 
the international application.

(c)	Where the international application has been published under 
Article 21, the International Bureau shall furnish a copy of the priority 
document to any person upon request and subject to reimbursement of the 
cost unless, prior to that publication:

(i)	the international application was withdrawn,

(ii)	the relevant priority claim was withdrawn or considered, 
under Rule 26bis.2 not to have been made.

(iii)	[Deleted]

(d)	[Deleted]

37 CFR 1.451.  The priority claim and priority document in an 
international application.

(a)	The claim for priority must, subject to paragraph (d) of this sec-
tion,  be made on the Request (PCT Rule 4.10) in a manner complying 
with sections 110 and 115 of the Administrative Instructions.

(b)	Whenever the priority of an earlier United States national appli-
cation is claimed in an international application, the applicant may request 
in a letter of transmittal accompanying the international application upon 
filing with the United States Receiving Office or in a separate letter filed 
in the Receiving Office not later than 16 months after the priority date, that 
the Patent and Trademark Office prepare a certified copy of the national 
application for transmittal to the International Bureau (PCT Article 8 and 
PCT Rule 17). The fee for preparing a certified copy is stated in ? 
1.19(b)(1).

(c)	If a certified copy of the priority document is not submitted 
together with the international application on filing, or, if the priority 
application was filed in the United States and a request and appropriate 
payment for preparation of such a certified copy do not accompany the 
international application on filing or are not filed within 16 months of the 
priority date, the certified copy of the priority document must be furnished 
by the applicant to the International Bureau or to the United States Receiv-
ing Office within the time limit specified in PCT Rule 17.1(a).

(d)	The applicant may correct or add a priority  claim in accordance 
with  PCT Rule 26 bis .1.

201.14	Right of Priority, Formal 
Requirements

Under the statute (35 U.S.C. 119(b)), an applicant who 
wishes to secure the right of priority must comply with cer-
tain formal requirements within a time specified. If these 
requirements are not complied with the right of priority is 
lost and cannot thereafter be asserted.

The requirements of the statute are (a) that the applicant 
must file a claim for the right and (b) he or she must also 
file a certified copy of the original foreign application; 
these papers must be filed within a certain time limit. The 
maximum time limit specified in the statute is that the 
claim for priority and the priority papers must be filed 
before the patent is granted, but the statute gives the Com-
missioner authority to set this time limit at an earlier time 
during the pendency of the application. Where a claim for 
priority under  35 U.S.C. 119(b) has not been made in the 
parent application, the claim for priority may be made in a 
continued prosecution application (CPA) filed under  37 
CFR 1.53(d) or FWC application filed under former  37 
CFR 1.62, provided the parent application has been filed 
within 12 months from the date of the earliest foreign fil-
ing. If the required papers are not filed within the time limit 
set the right of priority is lost.  A reissue was granted in 
Brenner v.   State of Israel, 158 USPQ 584 (D.C. Cir. 
1968), where the only ground urged was failure to file a 
certified copy of the original foreign application to obtain 
the right of foreign priority under  35 U.S.C. 119 before the 
patent was granted. 

It should be particularly noted that these papers must be 
filed in all cases even though they may not be necessary 
during the pendency of the application to overcome the 
date of any reference. The statute also gives the Commis-
sioner authority to require a translation of the foreign docu-
ments if not in the English language and such other 
information as the Commissioner may deem necessary.

37 CFR 1.63 requires that the oath or declaration shall 
state in any application in which a claim for foreign priority 
is made pursuant to  37 CFR 1.55 must identify the foreign 
application for patent or inventors' certificate on which pri-
ority is claimed, and any foreign applications having a fil-
ing date before that of the application on which priority is 
claimed, by specifying the application number, country, 
day, month, and year of its filing.

The requirements for recitation of foreign applications in 
the oath or declaration, while serving other purposes as 
well, are used in connection with the right of priority.

201.14(a)	Right of Priority, Time for Filing 
Papers 

The time for filing the priority papers required by the 
statute is specified in  37 CFR 1.55(a). 

37 CFR 1.55.  Claim for foreign priority.

(a)	An applicant in a nonprovisional application may claim the ben-
efit of the filing date of one or more prior foreign applications under the 
conditions specified in  35 U.S.C. 119(a) through (d) and 172.  The claim 
to priority need be in no special form and may be made by the attorney or 
agent if the foreign application is referred to in the oath or declaration as 
required by ? 1.63.  The claim for priority and the certified copy of the for-
eign application specified in  35 U.S.C. 119(b) must be filed in the case of 
an interference (? 1.630), when necessary to overcome the date of a refer-
ence relied upon by the examiner, when specifically required by the exam-
iner, and in all other situations, before the patent is granted.  If the claim 
for priority or the certified copy of the foreign application is filed after the 
date the issue fee is paid, it must be accompanied by a petition requesting 
entry and by the fee set forth in ? 1.17(i).  If the certified copy is not in the 
English language, a translation need not be filed except in the case of 
interference; or when necessary to overcome the date of a reference relied 
upon by the examiner; or when specifically required by the examiner, in 
which event an English language translation must be filed together with a 
statement that the translation of the certified copy is accurate.

*****

It should first be noted that the Commissioner has by 
rule specified an earlier ultimate date than the date the 
patent is granted for filing a claim and a certified copy.  The 
latest time at which the papers may be filed without petition 
is the date of the payment of the issue fee, except that, 
under certain circumstances, they are required at an earlier 
date. In all cases, the papers must be filed before the patent 
issues. These circumstances are specified in the rule as: 

(A)	in the case of interferences in which event the 
papers must be filed within the time specified in the inter-
ference rules, 

(B)	when necessary to overcome the date of a refer-
ence relied on by the examiner, and 

(C)	when specifically required by the examiner.

In view of the shortened periods for prosecution leading 
to allowances, it is recommended that priority papers be 
filed as early as possible. Although  37 CFR 1.55(a) per-
mits the filing of priority papers up to and including the 
date for payment of the issue fee, it is advisable that such 
papers be filed promptly after filing the application. Fre-
quently, priority papers are found to be deficient in material 
respects, such as for example, the failure to include the cor-
rect certified copy, and there is not sufficient time to rem-
edy the defect. Occasionally, a new oath or declaration may 
be necessary where the original oath or declaration omits 
the reference to the foreign filing date for which the benefit 
is claimed. The early filing of priority papers would thus be 
advantageous to applicants in that it would afford time to 
explain any inconsistencies that exist or to supply any addi-
tional documents that may be necessary. 

It is also suggested that a pencil notation of the applica-
tion number of the corresponding U.S. application be 
placed on the priority papers. Such notation should be 
placed directly on the priority papers themselves even 
where a cover letter is attached bearing the U.S. application 
data. Experience indicates that cover letters and priority 
papers occasionally become separated, and without the sug-
gested pencil notations on the priority papers, correlating 
them with the corresponding U.S. application becomes 
exceedingly difficult, frequently resulting in severe prob-
lems for both the Office and applicant. Adherence to the 
foregoing suggestion for making a pencil notation on the 
priority document of the U.S. application data will result in 
a substantial lessening of the problem.

Priority papers filed after the date of payment of the 
issue fee will be accepted and acknowledged only if filed 
before the patent is granted and if a petition with fee (37 
CFR 1.17(i)) pursuant to  37 CFR 1.55(a) is filed and 
granted. 

201.14(b)	Right of Priority, Papers Required 

The filing of the priority papers under  35 U.S.C. 119(a)-
(d) makes the record of the file of the United States patent 
complete. The Patent and Trademark Office does not nor-
mally examine the papers to determine whether the appli-
cant is in fact entitled to the right of priority and does not 
grant or refuse the right of priority, except as described in  
MPEP ? 201.15 and in cases of interferences.

The papers required are the claim for priority and the 
certified copy of the foreign application. The claim to prior-
ity need be in no special form, and may be made by the 
attorney or agent at the time of transmitting the certified 
copy if the foreign application is the one referred to in the 
oath or declaration of the U.S. application. No special lan-
guage is required in making the claim for priority, and any 
expression which can be reasonably interpreted as claiming 
the benefit of the foreign application is accepted as the 
claim for priority. The claim for priority may appear in the 
oath or declaration with the recitation of the foreign appli-
cation.

The certified copy which must be filed is a copy of the 
original foreign application with a certification by the 
patent office of the foreign country in which it was filed.  
Certified copies ordinarily consist of a copy of the specifi-
cation and drawings of the applications as filed with a cer-
tificate of the foreign patent office giving certain 
information. "Application" in this connection is not consid-
ered to include formal papers such as a petition. A copy of 
the foreign patent as issued does not comply since the 
application as filed is required; however, a copy of the 
printed specification and drawing of the foreign patent is 
sufficient if the certification indicates that it corresponds to 
the application as filed.  A French patent stamped "Service 
De La Propriete Industrielle - Conforme Aux Pieces Depo-
sees A L' Appui de La Demande" and additionally bearing 
a signed seal is also acceptable in lieu of a certified copy of 
the French application.

When the claim to priority and the certified copy of the 
foreign application are received while the application is 
pending before the examiner, the examiner should make no 
examination of the papers except to see that they corre-
spond in number, date and country to the application identi-
fied in the oath or declaration and contain no obvious 
formal defects. The subject matter of the application is not 
examined to determine whether the applicant is actually 
entitled to the benefit of the foreign filing date on the basis 
of the disclosure thereof.

DURING INTERFERENCE

If priority papers are filed in an interference, it is not 
necessary to file an additional certified copy in the applica-
tion file. The administrative patent judge will place them in 
the application file.

LATER FILED APPLICATIONS, REISSUES

Where the benefit of a foreign filing date based on a for-
eign application is claimed in a later filed application (i.e., 
continuation, continuation-in-part, division) or in a reissue 
application and a certified copy of the foreign application 
as filed, has been filed in a parent or related application, it 
is not necessary to file an additional certified copy in the 
later application.  A reminder of this provision is found in 
Form Paragraph 2.20. The applicant when making such 
claim for priority may simply identify the application con-
taining the certified copy. In such cases, the examiner 
should acknowledge the claim on form PTOL-326. Note 
copy in  MPEP ? 707.

If the applicant fails to call attention to the fact that the 
certified copy is in the parent or related application and the 
examiner is aware of the fact that a claim for priority under  
35 U.S.C. 119(a)-(d) was made in the parent application, 
the examiner should call applicant's attention to these facts 
in an Office action, so that if a patent issues on the later or 
reissue application, the priority data will appear in the 
patent. In such cases, the language of Form Paragraph 2.20 
should be used.

?  2.20 Priority Papers in Parent Application

Applicant is reminded that in order for a patent issuing on the instant 
application to obtain the benefit of priority based on priority papers filed 
in parent Application No. [1] under  35 U.S.C. 119(a)-(d), a claim for such 
foreign priority must be made in this application.  In making such claim, 
applicant may simply identify the application containing the priority 
papers.

Where the benefit of a foreign filing date, based on a for-
eign application, is claimed in a later filed application or in 
a reissue application and a certified copy of the foreign 
application, as filed, has not been filed in a parent or related 
application, a claim for priority may be made in the later 
application. In re Tangsrud, 184 USPQ 746 (Comm'r Pat. 
1973). When such a claim is made in the later application 
and a certified copy of the foreign application is placed 
therein, the examiner should acknowledge the claim on 
form PTOL-326.  Note copy in  MPEP ? 707.

WHERE AN ACTUAL MODEL WAS ORIGINALLY 
FILED IN GERMANY

The German design statute does not permit an applicant 
having an establishment or domicile in the Federal Repub-
lic of Germany to file design patent applications with the 
German Patent Office. These German applicants can only 
obtain design protection by filing papers or an actual 
deposit of a model with the judicial authority ("Amtsger-
icht") of their principal establishment or domicile. Filing 
with the German Patent Office is exclusively reserved for 
applicants who have neither an establishment or domicile 
in the Federal Republic of Germany. The deposit in an 
"Amtsgericht" has the same effect as if deposited at the 
German Patent Office and results in a "Geschmacksmuster" 
which is effective throughout Germany.

In implementing the Paris Convention,  35 U.S.C. 
119(a)-(d) requires that a copy of the original foreign appli-
cation, specification, and drawings certified by the patent 
office of the foreign country in which filed, shall be submit-
ted to the Patent and Trademark Office, in order for an 
applicant to be entitled to the right of priority in the United 
States.

Article 4, section A(2) of the Paris Convention however 
states that "(a)ny filing that is equivalent to a regular 
national filing under the domestic legislation of any coun-
try of the Union . . . shall be recognized as giving rise to the 
right of priority." Article 4D(3) of the Convention further 
provides that countries of the Union may require any per-
son making a declaration of priority to produce a copy of 
the previously filed application (description, drawings, etc.) 
certified as correct by the authority which received this 
application.

As far as the physical production of a copy of the earlier 
filed paper application is concerned, an applicant should 
have no difficulty in providing a copy, certified by the 
authority which received it, if the earlier filed application 
contained drawings illustrating the design. A problem, 
however, arises when the only prior "regular national fil-
ing" consisted of the deposit of an actual model of the 
design.  35 U.S.C. 119(a)-(d) is silent on this subject.

Therefore, the Patent and Trademark Office will receive 
as evidence of an earlier filed German design application 
under  35 U.S.C. 119(a)-(d), drawings or acceptable clear 
photographs of the deposited model faithfully reproducing 
the design embodied therein together with other required 
information, certified as being a true copy by an official of 
the court with which the model was originally deposited.

35 U.S.C. 119(a)-(d) also provides for the certification of 
the earlier filed application by the patent office of the for-
eign country in which it was filed. Because Article 4D(3) of 
the Paris Convention which  35 U.S.C. 119(a)-(d) imple-
ments refers to certification ". . . by the authority which 
received such application . . .", the reference to "patent 
office" in the statute is construed to extend also to the 
authority which is in charge of the design register, i.e., the 
applicable German court. As a consequence, an additional 
certification by the German Patent Office will not be neces-
sary especially since Article 4D(3) of the Paris Convention 
provides that authentication shall not be required.

Although, as stated above, a "regular national filing" 
gives rise to the right of priority, the mere submission of a 
certified copy of the earlier filed foreign application, how-
ever, may not be sufficient to perfect that right in this coun-
try. For example, among other things, an application filed 
in a foreign country must contain a disclosure of the inven-
tion adequate to satisfy the requirements of  35 U.S.C. 112, 
in order to form the basis for the right of priority in a later 
filed United States application.

201.14(c)	Right of Priority, Practice 

Before going into the practice with respect to those 
instances in which the priority papers are used to overcome 
a reference, there will first be described the practice when 
there is no occasion to use the papers, which will be in the 
majority of cases.  In what follows in this section it is 
assumed that no reference has been cited which requires the 
priority date to be overcome.

NO IRREGULARITIES

When the papers under  35 U.S.C. 119(a)-(d) are 
received they are to be endorsed on the contents page of the 
file as "Letter (or amendment) and foreign application".  
Assuming that the papers are regular in form and that there 
are no irregularities in dates, the examiner in the next 
Office action will advise the applicant that the papers have 
been received on form PTOL-326 or by use of Form Para-
graph 2.26.

?  2.26 Claimed Foreign Priority -  Papers Filed

Receipt is acknowledged of papers submitted under  35 U.S.C. 119(a)-
(d), which papers have been placed of record in the file.

Where the priority papers have been filed in another 
application, use Form Paragraph 2.27.

?  2.27 Acknowledge Foreign Priority Paper in Parent

Acknowledgment is made of applicant's claim for foreign priority 
under  35 U.S.C. 119 (a)-(d).  The certified copy has been filed in parent 
Application No. [1], filed on [2].

Examiner Note:

1.	For problems with foreign priority, see form paragraphs 2.18 to 2.24.

2.	In bracket 1, insert series code and serial no. of parent.

The examiner will enter the information specified in  
MPEP ? 202.03 on the face of the file wrapper or on the 
PALM bib-data sheet for 09/ series applications.

PAPERS INCONSISTENT

If the certified copy filed does not correspond to the for-
eign application identified in the application oath or decla-
ration, or if the application oath or declaration does not 
refer to the particular foreign application, the applicant has 
not complied with the requirements of the rule relating to 
the oath or declaration. In such instances, the examiner's 
letter, after acknowledging receipt of the papers, should 
require the applicant to explain the inconsistency and to file 
a new oath or declaration stating correctly the facts con-
cerning foreign applications required by  37 CFR 1.63 by 
using Form Paragraph 2.21.

?  2.21 Oath, Declaration Does Not Contain Reference to Foreign 
Filing

Receipt is acknowledged of papers filed under  35 U.S.C. 119(a)-(d) 
based on an application filed in   [1] on [2].  Applicant has not complied 
with the requirements of  37 CFR 1.63(c), since the oath or declaration 
does not acknowledge the filing of any foreign application.  A new oath or 
declaration is required in the body of which the present application should 
be identified by application number and filing date.

Other situations requiring some action by the examiner 
are exemplified by other Form Paragraphs.

NO CLAIM FOR PRIORITY

Where applicant has filed a certified copy but has not 
made a claim for priority, use Form Paragraph 2.22.

?  2.22 Certified Copy Filed, But No Claim Made

Receipt is acknowledged of a certified copy of the   [1] application 
referred to in the oath or declaration.  If this copy is being filed to obtain 
the benefits of the foreign filing date under  35 U.S.C. 119(a)-(d), appli-
cant should also file a claim for such priority as required by  35 U.S.C. 
119(b).

NOTE: Where the applicant's accompanying letter 
states that the certified copy is filed for priority purposes or 
for the convention date, it is accepted as a claim for prior-
ity.

FOREIGN APPLICATIONS ALL MORE THAN A 
YEAR BEFORE EARLIEST EFFECTIVE U.S. 
FILING

Where the earlier foreign application was filed more 
than 12 months prior to the U.S. application, use Form 
Paragraph 2.23.

?  2.23 Foreign Filing More Than 12 Months Earlier

Acknowledgment is made of applicant's claim for priority under  35 
U.S.C. 119(a)-(d) based upon an application filed in [1] on   [2].  A claim 
for priority under  35 U.S.C. 119(a)-(d) cannot be based on said applica-
tion, since the United States application was filed more than twelve 
months thereafter.

SOME FOREIGN APPLICATIONS MORE THAN A 
YEAR BEFORE U.S. FILING

For example, where a British provisional specification 
was filed more than a year before a U.S. application, but 
the British complete application was filed within the year, 
and certified copies of both were submitted, language simi-
lar to the following should be used: "Receipt is acknowl-
edged of papers filed on September 18, 1979, purporting to 
comply with the requirements of  35 U.S.C. 119(a)-(d).  It 
is not seen how the claim for priority can be based on the 
British specification filed January 23, 1978, because the 
instant application was filed more than one year thereafter. 
However, the printed heading of the patent will note the 
claimed priority date based on the complete specification; 
i.e., November 1, 1978, for such subject matter as was not 
disclosed in the provisional specification." 

CERTIFIED COPY NOT THE FIRST FOREIGN 
APPLICATION

?  2.24 Claimed Foreign Priority Date Not the Earliest Date

Receipt is acknowledged of papers filed on [1] purporting to comply 
with the requirements of  35 U.S.C. 119(a)-(d) and they have been placed 
of record in the file.  Attention is directed to the fact that the date for 
which foreign priority is claimed is not the date of the first filed foreign 
application acknowledged in the oath or declaration.

NO CERTIFIED COPY

Where priority is claimed but no certified copy of the 
foreign application has been filed, use Form Paragraph 
2.25.

?  2.25 Claimed Foreign Priority, No Papers Filed

Acknowledgment is made of applicant's claim for foreign priority 
based on an application filed in [1] on [2].  It is noted, however, that appli-
cant has not filed a certified copy of the [3] application as required by 35 
U.S.C. 119(b).

Any unusual situation may be referred to the group 
director. 

APPLICATION IN ISSUE

When priority papers for applications which have been 
sent to the Publishing Division are received, the priority 
papers should be sent to the Publishing Division.  The Pub-
lishing Division will acknowledge receipt of all such prior-
ity papers.  If the issue fee has been paid applicant must 
petition under 37 CFR 1.55(a).

RETURN OF PAPERS

It is sometimes necessary for the examiner to return 
papers filed under 35 U.S.C. 119(a)-(d) either upon request 
of the applicant, for example, to obtain a translation of the 
certified copy of the foreign application, or because they 
fail to meet a basic requirement of the statute, such as 
where all foreign applications were filed more than a year 
prior to the U.S. filing date.

When the papers have not been given a paper number 
and endorsed on the file wrapper, it is not necessary to 
secure approval of the Commissioner for their return but 
they should be sent to the group director for cancellation of 
the Office stamps. Where the papers have been made of 
record in the file (given a paper number and endorsed on 
the file wrapper), a request for permission to return the 
papers should be addressed to the Commissioner of Patents 
and Trademarks and forwarded to the Group Director for 
approval. Where the return is approved, the written 
approval should be placed in the file wrapper. Any ques-
tions relating to the return of papers filed under 35 U.S.C. 
119(a)-(d) should be directed to the Office of the Assistant 
Commissioner for Patents.

FILLING OUT THE FOREIGN PRIORITY 
SECTION OF THE FILE WRAPPER LABEL (PTO-
436L) 

Where foreign applications are listed on the 37 CFR 1.63 
oath or declaration, the examiner should check that such 
foreign applications are properly listed on the file wrapper, 
correcting errors of typography or format as necessary, and 
initialing the "verified" line when the information on the 
file wrapper, matches the oath or declaration. See MPEP ? 
202.03.  Should there be an error on the oath or declaration 
itself, the examiner should require a new oath or declara-
tion. If a foreign application listed on the oath or declara-
tion is not listed on the file wrapper, the examiner should 
print in black ink the country, application number, and fil-
ing date under "Foreign/PCT Applications" on the file 
wrapper or on the PALM bib-data sheet. Applications listed 
on the file wrapper but filed in countries not qualifying for 
benefits under 35 U.S.C. 119(a)-(d) should be lined through 
in red ink. A listing of countries qualifying for benefits 
under 35 U.S.C. 119(a)-(d) appears at MPEP ? 201.13.

Below the "Foreign/PCT applications" portion, the 
"yes" box for "Foreign priority claimed" should be checked 
only when priority has been properly claimed as provided 
in 37 CFR 1.55. Otherwise, the Examiner should check 
"no". Where a claim is made for one or more listed foreign 
applications and not for one or more other listed foreign 
applications, the data on the file wrapper concerning the 
unclaimed applications should be lined through in pencil 
and the "yes" box checked. 

The "yes" box for "35 U.S.C. 119 conditions met" 
should be checked when there are any foreign applications 
listed that meet all of the requirements of 35 U.S.C. 119(a)-
(d). In such cases, any listed foreign application that does 
not meet all of the requirements of 35 U.S.C. 119(a)-(d) 
should be lined through in pencil. 

201.14(d)	Proper Identification of Priority 
Application  [R-1]

In order to help overcome problems in determining the 
proper identification of priority applications for patent doc-
umentation and printing purposes, the following tables 
have been prepared which set out for various countries the 
forms of acceptable presentation of application numbers.

The tables should enable applicants, examiners and oth-
ers to extract from the various formats the minimum 
required data which comprises a proper citation.

Proper identification of priority applications is essential 
to establishing accurate and complete relationships among 
various patent documents which reflect the same invention. 
Knowledge of these relationships is essential to search file 
management, technology documentation and various other 
purposes. 

The tables show the forms of presentation of application 
numbers as used in the records of the source or originating 
patent office. They also show, under the heading "Mini-
mum Significant Part of the Number", the simplified form 
of presentation which should be used in United States 
Patent and Trademark Office records.

Note particularly that in the simplified format that:

(A)	Alpha symbols preceding numerals are eliminated 
in all cases except Hungary.

(B)	A decimal character and numerical subset as part 
of a number is eliminated in all cases except France.

(C)	Use of the dash (-) is reduced, but is still an 
essential element of application numbers, in the case of 
Czechoslovakia and Japan.

MINIMUM SIGNIFICANT PART OF AN APPLICATION NUMBER PROVIDING UNIQUE IDENTIFICATION OF 
AN APPLICATION

 Table I-Countries Using Annual Application Number Series
			
Country #
	Example of  
application  
number at 
source
	Minimum sig-
nificant part  
of the number
	Remarks

Austria  [AT]
	A 12116/69
	12116/69
	The letter A is common to all patent applications.

Czechoslova-
kia [CS]
	PV3628-72
	3628-72
	PV is an abbreviation meaning "application of invention."

Denmark 
[DK]
	68/2986
	68/2986
	
Egypt [EG]
	487-1968
	487-1968
	
Table I-Countries Using Annual Application Number Series-Continued
			
Country #
	Example of  
application  
number at 
source
	Minimum sig-
nificant part  
of the number
	Remarks

Finland [FI]
	3032/69 (old 
numbering 
system) 
752032 (new 
numbering  
system)
	3032/69  
752032
	  New numbering system introduced on January 1, 1975.  First two 
digits indicate year of application.

France [FR]
	69.38066  
7319346
	68.38066  
7319346
	 Deletion of the intermediary full stop from this number onwards.

Note:  All French applications are numbered in a 
single  annual series, e.g., demande de brevet, 
demande de  certificate d'addition (first addition, 
second addition, etc.)
			Annual series of numbers is used for all applications of patent doc-
uments. The number allotted to an application at its filing (national 
registration number) is also the number of the granted patent.

Germany, Fed. 
Rep. of [DE]
	P 1940738//6-24     
G6947580.5
	1940738     
*6947580
	P=Patent.  The first two digits of the number represent the last two 
digits of the year of application less 50 (e.g., 1969 less 50=19; 
1973 less 50=23). The first digit after the slash is an error control 
digit.  The two digits following the dash indicate the examining 
division.
G= Gebrauschsmuster.  The first two digits of the number repre-
sent the last two digits of the year of application.  The difference in 
numbering scheme of the first two digits affords unique identifica-
tion of this type of application.  However, see note below (*).  The 
digit after the period is for error control. 

Ireland
	1152/69
	1152/69
	
Italy [IT]
	28039-A/70
	28039/70
	Application numbers are not presented on published patent docu-
ments or given in an official gazette.  An exclusive block of appli-
cation numbers is given annually to each of 93 provincial bureaus 
where patent applications may be filed.  In 1973, 90,000 numbers 
were allotted, wherein an estimated total of 30,000 applications 
were expected to be filed.  While, as a consequence, gaps will exist 
in the ultimately used numbers, each application has a unique num-
ber.  For this purpose, neither the dash nor the letter identifying the 
receiving bureau, which follows the application number, is needed. 

Japan [JP]
	46-69807    
46-81861
	46-69807  
*46-81861
	The two digits before the dash indicate the year (1925 or 1988) of 
the Emperor's reign in which the application was filed (46=1971).  
Patent and utility model applications are numbered in separate 
series.

Netherlands 
[NL]
	7015038
	7015038
	First two digits indicate year of application.

 Table I-Countries Using Annual Application Number Series-Continued
			
Country #
	Example of  
application  
number at 
source
	Minimum sig-
nificant part  
of the number
	Remarks

Norway [NO]
	1748/70 (old 
numbering 
system)  
74001 (new 
numbering  
system)
	1748/70  
74001
	  New numbering system introduced on January 1, 1974. First two 
digits indicate year of application.

South Africa 
[ZA]
	70/4865
	70/4865
	
Sweden [SE]
	16414/70 
7300001-0 
(new system)
	16414/70 
7300001
	The new numbering system was introduced January 1, 1973. First 
two digits indicate year of application.  The digit after the dash is 
used for computer control.

Switzerland 
[CH]
	15978/70
	15978/70
	
United 
Kingdom 
[GB]
	41352/70
	41352/70
	
Yugoslavia 
[YU]
	P1135/66
	1135/66
	
Zambia [ZM]
	142/70
	142/70
	
Argentina 
[AR]
	231790
	231790
	
Australia [AU]
	59195/69
	59195/69
	Long series spread over several years. New series started in 1970.

Belgium [BE]
	96469
	96469
	Application numbers are not presented on published patent docu-
ments or given in an official gazette.  A series of parallel numbers 
is provided to each of 10 offices which, respectively, may receive 
applications (control office + 9 provincial bureaus) and assign 
application numbers.  Series was started in 1958. Since an applica-
tion number does not uniquely identify a BE document, the patent 
number is often cited as the "priority application number."

Brazil [BR]
	222986
	222986
	
Bulgaria [BG]
	11572
	11572
	
Canada [CA]
	103828
	103828 
	
Colombia 
[CO]
	126050
	126050
	

Table II-Countries Using Other Than Application Number Series
			
Country #
	Example of  
application  
number at 
source
	Minimum sig-
nificant part of 
the number
	Remarks

Brazil [BR]
	222986
	222986
	
Bulgaria [BG]
	11572
	11572
	
Canada [CA]
	103828
	103828
	
Colombia 
[CO]
	126050
	126050
	
Cuba [CU]
	33384
	33384
	
German
(Dem. Rep.) 
[DD]
	AP84c/137355 
WP135b/
147203
	137355 
147203
	AP=Ausschliessungspatent;  WP=Wirtschaftspatent. The other 
symbols before the slash are classification symbols.  A single num-
bering series covers both AP and WP applications.

Greece [GR]
	44114
	44114
	
Hungary [HU]
	OE 107
	OE 107
	The letters preceding the number are essential for identifying the 
application.  They are the first letter and the first following vowel 
of the applicant's name.  There is a separate numbering sequence 
for each pair of letters.

Israel [IL]
	35691
	35691
	
Luxembourg 
[LU]
	60093
	60093
	
Mexico [MX]
	123723
	123723
	
Monaco [MC]
	908
	908
	
New Zealand 
[NZ]
	161732
	161732
	
OAPI [OA]
	52118
	52118
	
Philippines 
[PH]
	11929
	11929
	
Poland [PO]
	P144826 
44987
	144826 
*44987
	
Portugal [PT]
	P52-555-5607
	52555     
*5607
	
Romania [RO]
	65211
	65211
	
Soviet Union
	1397205-15
	1397205
	The numbers following the slash denote the examination division 
and a processing division.

Table II-Countries Using Other Than Application Number Series
			
Country #
	Example of  
application  
number at 
source
	Minimum sig-
nificant part of 
the number
	Remarks

United States 
[US]
	889877
	889877
	The highest number assigned in the series of numbers started in 
January 1960. New series started in January 1970, January 1979, * 
January 1987 >, and January 1998<.

# ICIREPAT Country Code is indicated in brackets, e.g., [AR].
			
 * In order to distinguish utility model applications from patent applications, it is necessary to identify them as to type of 
application in citations or references.  This may be done by using the name of the application type in conjunction with the 
number or by using the symbol "U" in brackets or other enclosure following the number.
			

201.15	Right of Priority, Overcoming 
a Reference

The only times during ex parte prosecution that the 
examiner considers the merits of an applicant's claim of pri-
ority is when a reference is found with an effective date 
between the date of the foreign filing and the date of filing 
in the United States and when an interference situation is 
under consideration. If at the time of making an action the 
examiner has found such an intervening reference, he or 
she simply rejects whatever claims may be considered 
unpatentable thereover, without paying any attention to the 
priority date (assuming the papers have not yet been filed). 
The applicant in his or her reply may argue the rejection if 
it is of such a nature that it can be argued, or present the for-
eign papers for the purpose of overcoming the date of the 
reference. If the applicant argues the reference, the exam-
iner, in the next action in the application, may specifically 
require the foreign papers to be filed in addition to repeat-
ing the rejection if it is still considered applicable, or he or 
she may merely continue the rejection.

Form Paragraph 2.19 may be used in this instance.

?  2.19 Overcome Rejection by Translation

Applicant cannot rely upon the foreign priority papers to overcome this 
rejection because a translation of said papers has not been made of record 
in accordance with 37 CFR 1.55. See MPEP ? 201.15.

Examiner Note:

This paragraph should follow a rejection based on an intervening refer-
ence.

In those cases where the applicant files the foreign 
papers for the purpose of overcoming the effective date of a 
reference, a translation is required if the foreign papers are 
not in the English language. When the examiner requires 
the filing of the papers, the translation should also be 
required at the same time. This translation must be filed 
together with a statement that the translation of the certified 
copy is accurate. When the necessary papers are filed to 
overcome the date of the reference, the examiner's action, if 
he or she determines that the applicant is not entitled to the 
priority date, is to repeat the rejection on the reference, stat-
ing the reasons why the applicant is not considered entitled 
to the date.  If it is determined that the applicant is entitled 
to the date, the rejection is withdrawn in view of the prior-
ity date.

If the priority papers are already in the file when the 
examiner finds a reference with the intervening effective 
date, the examiner will study the papers, if they are in the 
English language, to determine if the applicant is entitled to 
their date. If the applicant is found to be entitled to the date, 
the reference is simply not used but may be cited to appli-
cant on form PTO-892. If the applicant is found not entitled 
to the date, the unpatentable claims are rejected on the ref-
erence with an explanation. If the papers are not in the 
English language and there is no translation, the examiner 
may reject the unpatentable claims and at the same time 
require an English translation for the purpose of determin-
ing the applicant's right to rely on the foreign filing date.

The foreign application may have been filed by and in 
the name of the assignee or legal representative or agent of 
the inventor, as applicant. In such cases, if the certified 
copy of the foreign application corresponds with the one 
identified in the oath or declaration as required by 37 CFR 
1.63 and no discrepancies appear, it may be assumed that 
the inventors are entitled to the claim for priority. If there is 
disagreement as to inventors on the certified copy, the pri-
ority date should be refused until the inconsistency or dis-
agreement is resolved.

The most important aspect of the examiner's action per-
taining to a right of priority is the determination of the iden-
tity of invention between the U.S. and the foreign 
applications. The foreign application may be considered in 
the same manner as if it had been filed in this country on 
the same date that it was filed in the foreign country, and 
the applicant is ordinarily entitled to any claims based on 
such foreign application that he or she would be entitled to 
under our laws and practice. The foreign application must 
be examined for the question of sufficiency of the disclo-
sure under 35 U.S.C. 112, as well as to determine if there is 
a basis for the claims sought.

In applications filed from the United Kingdom there may 
be submitted a certified copy of the "provisional specifica-
tion," which may also in some cases be accompanied by a 
copy of the "complete specification." The nature and func-
tion of the United Kingdom provisional specification is 
described in an article in the Journal of the Patent Office 
Society of November 1936, pages 770-774. According to 
United Kingdom law the provisional specification need not 
contain a complete disclosure of the invention in the sense 
of 35 U.S.C. 112, but need only describe the general nature 
of the invention, and neither claims nor drawings are 
required. Consequently, in considering such provisional 
specifications, the question of completeness of disclosure is 
important.  If it is found that the United Kingdom provi-
sional specification is insufficient for lack of disclosure, 
reliance may then be had on the complete specification and 
its date, if one has been presented, the complete specifica-
tion then being treated as a different application and disre-
garded as to the requirement to file within 1 year.

In some instances, the specification and drawing of the 
foreign application may have been filed at a date subse-
quent to the filing of the petition in the foreign country. 
Even though the petition is called the application and the 
filing date of this petition is the filing date of the applica-
tion in a particular country, the date accorded here is the 
date on which the specification and drawing were filed.

It may occasionally happen that the U.S. application will 
be found entitled to the filing date of the foreign application 
with respect to some claims and not with respect to others. 
Occasionally a sole or joint applicant may rely on two or 
more different foreign applications and may be entitled to 
the filing date of one of them with respect to certain claims 
and to another with respect to other claims. 

201.16	Using Certificate of Correction to 
Perfect Claim for Priority Under 35 
U.S.C. 119(a)-(d)

35 U.S.C. 119.  Benefit of Earlier Filing Date; Right of Priority.

*****

(b)	No application for patent shall be entitled to this right of priority 
unless a claim therefor and a certified copy of the original foreign applica-
tion, specification and drawings upon which it is based are filed in the 
Patent and Trademark Office before the patent is granted...

*****

The failure to perfect a claim to foreign priority benefit 
prior to issuance of the patent may be cured by filing a reis-
sue application. Brenner v.  State of Israel, 158 USPQ 584 
(D.C. Cir. 1968).

However, under certain conditions, this failure may also 
be cured by filing a Certificate of Correction request under 
35 U.S.C. 255 and 37 CFR 1.323. For example, in the case 
of In re Van Esdonk, 187 USPQ 671 (Comm'r Pat. 1975), 
the Commissioner granted a request to issue a Certificate of 
Correction in order to perfect a claim to foreign priority 
benefits. In that case, a claim to foreign priority benefits 
had not been filed in the application prior to issuance of the 
patent. However, the application was a continuation of an 
earlier application in which the requirements of 35 U.S.C. 
119(a)-(d) had been satisfied. Accordingly, the Commis-
sioner held that the "applicants' perfection of a priority 
claim under 35 U.S.C. 119 in the parent application will 
satisfy the statute with respect to their continuation applica-
tion."

Although In re Van Esdonk involved the patent of a con-
tinuation application filed under former 37 CFR 1.60, it is 
proper to apply the holding of that case in similar factual 
circumstances to any patented application having benefits 
under 35 U.S.C. 120. This is primarily because a claim to 
foreign priority benefits in a continuing application, where 
the claim has been perfected in the parent application, con-
stitutes in essence a mere affirmation of the applicant's pre-
viously expressed desire to receive benefits under 35 
U.S.C. 119(a)-(d) for subject matter common to the foreign, 
parent, and continuing applications.

In summary, a Certificate of Correction under 35 U.S.C. 
255 and 37 CFR 1.323 may be requested and issued in 
order to perfect a claim for foreign priority benefit in a pat-
ented continuing application if the requirements of 35 
U.S.C. 119(a)-(d) had been satisfied in the parent applica-
tion prior to issuance of the patent and the requirements of 
37 CFR 1.55(a) are met.

However, a claim to foreign priority benefits cannot be 
perfected via a Certificate of Correction if the requirements 
of 35 U.S.C. 119(a)-(d) had not been satisfied in the pat-
ented application, or its parent, prior to issuance and the 
requirements of 37 CFR 1.55(a) are not met. In this latter 
circumstance, the claim to foreign priority benefits can be 
perfected only by way of a reissue application in accor-
dance with the rationale set forth in Brenner v.  State of 
Israel, 158 USPQ 584.

202	Cross-Noting

202.01	In Specification 

37 CFR 1.78.  Claiming benefit of earlier filing date and cross 
references to other applications. 

(a)(1)	A nonprovisional application may claim an invention disclosed 
in one or more prior filed copending nonprovisional applications or 
copending international applications designating the United States of 
America.  In order for a nonprovisional application to claim the benefit of 
a prior filed copending nonprovisional application or copending interna-
tional application designating the United States of America, each prior 
application must name as an inventor at least one inventor named in the 
later filed nonprovisional application and disclose the named inventor's 
invention claimed in at least one claim of the later filed nonprovisional 
application in the manner provided by the first paragraph of 35 U.S.C. 
112. In addition, each prior application must be:

(i)	An international application entitled to a filing date in accor-
dance with PCT Article 11 and designating the United States of America; 
or

(ii)	Complete as set forth in ? 1.51(b); or

(iii)	Entitled to a filing date as set forth in ? 1.53(b) or ? 1.53(d) 
and include the basic filing fee set forth in ? 1.16; or

(iv)	Entitled to a filing date as set forth in ? 1.53(b) and have 
paid therein the processing and retention fee set forth in ? 1.21(l) within 
the time period set forth in ? 1.53(f).

(2)	Except for a continued prosecution application filed under ? 
1.53(d), any nonprovisional application claiming the benefit of one or 
more prior filed copending nonprovisional applications or international 
applications designating the United States of America must contain or be 
amended to contain in the first sentence of the specification following the 
title a reference to each such prior application, identifying it by application 
number (consisting of the series code and serial number) or international 
application number and international filing date and indicating the rela-
tionship of the applications. The request for a continued prosecution appli-
cation under ? 1.53(d) is the specific reference required by 35 U.S.C. 120 
to the prior application. The identification of an application by application 
number under this section is the specific reference required by 35 U.S.C. 
120 to every application assigned that application number. Cross-refer-
ences to other related applications may be made when appropriate (see ? 
1.14(a)).

*****

Where an applicant in an application filed under 37 CFR 
1.53(b) seeks to claim the benefit under 35 U.S.C. 120 or 
121 of a continued prosecution application (CPA) filed 
under 37 CFR 1.53(d), 37 CFR 1.78(a)(2) requires a refer-
ence to the CPA by application number in the first sentence 
of such application. 37 CFR 1.78(a)(2) also provides that 
"[t]he identification of an application by application num-
ber under this section is the specific reference required by 
35 U.S.C. 120 to every application assigned that applica-
tion number." Thus, where a referenced CPA is in a chain 
of CPAs, this reference will constitute a reference under 35 
U.S.C. 120 and 37 CFR 1.78(a)(2) to every CPA in the 
chain as well as the noncontinued prosecution application 
originally assigned such application number. Applicants are 
not permitted to delete such a claim for benefit under 35 
U.S.C. 120 as to certain applications assigned that applica-
tion number (e.g., for patent term purposes). 

There is seldom a reason for one application to refer to 
another application with no common applicant where the 
applications are not assigned to a common assignee. Such 
reference ordinarily should not be permitted.

See also 37 CFR 1.79 and MPEP ? 201.11.

202.02	Notation on File Wrapper 
Regarding Prior U.S. Applications, 
Including Provisional Applications

The heading of a printed patent includes all identifying 
parent data of continuation-in-part, continuation, divi-
sional, substitute, and reissue applications, as well as any 
provisional application from which priority is claimed. 
Therefore, the identifying data of all parent or prior appli-
cations, when given in the specification must be inserted by 
the examiner in black ink on the file wrapper (for applica-
tions with the 09/ series, on the PALM bib-data sheet) in 
the case of a DIVISION, a CONTINUATION, a CONTIN-
UATION-IN-PART and, whether given in the specification 
or not, in the case of a SUBSTITUTE application. Simi-
larly, the application number of any provisional application 
from which priority is claimed should be printed on the file 
wrapper or on the PALM bib-data sheet for 09/ series appli-
cations.

The heading of a printed patent issuing on a continued 
prosecution application (CPA) filed under 37 CFR 1.53(d) 
will identify the application number and filing date of the 
most recent noncontinued prosecution application (but not 
the filing date of the CPA) as well as all parent application 
data from which priority was claimed in the most recent 
noncontinued prosecution application.

Where parent or prior application data, including provi-
sional application data, is preprinted on the file wrapper or 
on the PALM bib-data sheet for 09/ series applications, the 
examiner should check that data for accuracy, including 
whether the application is, in fact, copending with the par-
ent application or applications of which priority is claimed. 
Where the data is correct, the examiner should initial the 
file wrapper or the PALM bib-data sheet for 09/ series 
applications in the provided space. Should there be error in 
the preprinted parent application data, the application 
should be forwarded to the Office of Initial Patent Exami-
nation (OIPE) Customer Corrections for correction or entry 
of the data in the PALM data base, accompanied by a com-
pleted OIPE Data Base Routing Slip. For 09/ series applica-
tions, it will not be necessary to forward the application to 
OIPE for correction of the parent application data in 
PALM. The correction or entry of the data in the PALM 
data base can be made by technical support staff of 
the examining group. Upon entry of the data, a new PALM 
bib-data sheet should be printed and placed in the file wrap-
per. Only these terms should be used to specify the relation-
ship between applications because of clarity and ease of 
printing. The status of the parent application, but not a pro-
visional application, should also be indicated if it has been 
patented, abandoned, or published under either the Defen-
sive Publication Program or the Trial Voluntary Protest 
Program. Note MPEP ? 1302.04(f). The "None" boxes 
must be marked when no parent or prior application infor-
mation is present on the file wrappers containing such 
boxes. This should be done no later than the first action.

The inclusion of parent or prior application information 
in the heading does not necessarily indicate that the claims 
are entitled to the benefit of the earlier filing date.

See MPEP ? 306 for work done by the Assignment Divi-
sion pertaining to these particular types of applications.

In the situation in which there has been no reference to a 
parent application because the benefit of its filing date is 
not desired, no notation as to the parent application is made 
on the face of the file wrapper or on the PALM bib-data 
sheet for 09/ series applications.

202.03	Notation on File Wrapper When 
Priority Is Claimed for Foreign 
Application

In accordance with MPEP ? 201.14(c), the examiner will 
fill in the spaces concerning foreign applications on the 
face of the older file wrappers.

The information to be written on the face of the file 
wrapper consists of the country, application date (filing 
date), and if available, the application and patent numbers. 
In some instances, the particular nature of the foreign appli-
cation such as "utility model" (Germany (Gebrauchsmus-
ter) and Japan) must be written in parentheses before the 
application number. For example: Application Number 
(utility model) B62854.

At the present time the computer printed file wrapper 
labels (for 08/ or earlier series applications) or PALM bib-
data sheet (for 09/ series applications) include the prior for-
eign application information. The examiner should check 
this information for accuracy. Should there be error, the 
examiner should make the appropriate corrections directly 
on the file wrapper or on the PALM bib-data sheet in black 
ink. The examiner should initial the file wrapper or the 
PALM bib-data sheet in the "VERIFIED" space provided 
when the information is correct or has been amended to be 
correct. However, the examiner must still indicate on the 
Office action and on the file wrapper or on the PALM bib-
data sheet whether the conditions of 35 U.S.C. 119(a)-(d) 
have been met.

If the filing dates of several foreign applications are 
claimed (see MPEP ? 201.15, last paragraph) and satisfac-
tory papers have been received for each, information 
respecting each of the foreign applications is to be entered 
on the face of the file wrapper or on the PALM bib-data 
sheet.

The front page of the patent when it is issued, and the 
listing in the Official Gazette, will refer to the claim of pri-
ority, giving the country, the filing date, and the number of 
the foreign application in those applications in which the 
face of the file or the PALM bib-data sheet has been 
endorsed.

202.04	In Oath or Declaration 

As will be noted by reference to MPEP ? 201.14, 37 
CFR 1.63 requires that the oath or declaration include cer-
tain information concerning applications filed in any for-
eign country.

202.05	In Case of Reissues 

37 CFR 1.179 requires that a notice be placed in the file 
of an original patent for which an application for reissue 
has been filed. See MPEP ? 1431.

203	Status of Applications 

203.01	New 

A "new" application is a nonprovisional one that has not 
yet received an action by the examiner. An amendment 
filed prior to the first Office Action does not alter the status 
of a "new" application.

203.02	Rejected

A nonprovisional application which, during its prosecu-
tion in the examining group and before allowance, contains 
an unanswered examiner's action is designated as a 
"rejected" application. Its status as a "rejected" application 
continues as such until acted upon by the applicant in reply 
to the examiner's action (within the allotted reply period), 
or until it becomes abandoned.

203.03	Amended

An "amended" or "old" nonprovisional application is 
one that having been acted on by the examiner, has in turn 
been acted on by the applicant in reply to the examiner's 
action. The applicant's reply may be confined to an elec-
tion, a traverse of the action taken by the examiner or may 
include an amendment of the application.

203.04	Allowed or in Issue

An "allowed" nonprovisional application or an applica-
tion "in issue" is one which, having been examined, is 
passed to issue as a patent, subject to payment of the issue 
fee. Its status as an "allowed" application continues from 
the date of the notice of allowance until it is withdrawn 
from issue or until it issues as a patent or becomes aban-
doned, as provided in 37 CFR 1.316. 

The files of allowed applications are kept in the Publish-
ing Division.

203.05	Abandoned 

An abandoned application is, inter alia, one which is 
removed from the Office docket of pending applications:

(A)	through formal abandonment by the applicant 
(acquiesced in by the assignee if there is one) or by the 
attorney or agent of record; 

(B)	through failure of applicant to take appropriate 
action at some stage in the prosecution of a nonprovisional 
application; 

(C)	for failure to pay the issue fee (MPEP ? 203.07, ? 
711 to ? 711.05); or

(D)	in the case of a provisional application, no later 
than 12 months after the filing date of the provisional appli-
cation (see MPEP ? 711.03(c) and 35 U.S.C. 111 (b) (5)).

203.06	Incomplete

An application lacking some of the essential parts and 
not accepted for filing is termed an incomplete application. 
(MPEP ? 506, ? 506.01 and ? 601.01(d)-(g)).

203.07	Abandonment for Failure to Pay 
Issue Fee

An allowed application in which the Issue Fee is not paid 
within 3 months after the Notice of Allowance in accor-
dance with 35 U.S.C. 151 is abandoned for that reason (37 
CFR 1.316). The issue fee may, however, be accepted by 
the Commissioner if on petition it is shown that the delay in 
payment was unavoidable and payment of the fee for 
delayed payment of the issue fee under 37 CFR 1.17(l), in 
which case the patent will issue as though no abandonment 
had occurred (MPEP ? 711.03(c)). (37 CFR 1.137(a)). The 
issue fee may also be accepted if on petition it is shown that 
the delay in payment was unintentional and upon payment 
of the fee for delayed payment of the issue fee under 37 
CFR 1.17(m) (37 CFR 1.137(b)).

203.08	Status Inquiries [R-1]

NEW APPLICATION

Current examining procedures now provide for the rou-
tine mailing from the examining groups of Form PTOL-37 
in every case of allowance of an application. Thus, the 
mailing of a form PTOL-37 in addition to a formal Notice 
of Allowance (PTOL-85) in all allowed applications would 
seem to obviate the need for status inquiries even as a pre-
cautionary measure where the applicant may believe his or 
her new application may have been passed to issue on the 
first examination. However, as an exception, a status 
inquiry would be appropriate where a Notice of Allowance 
is not received within three months from receipt of form 
PTOL-37.

Current examining procedures also aim to minimize the 
spread in dates among the various examiner dockets of 
each art unit and group with respect to actions on new 
applications. Accordingly, the dates of the "oldest new 
applications" appearing in the Official Gazette are fairly 
reliable guides as to the expected time frames of when the 
examiners reach the applications or action.

Therefore, it should be rarely necessary to query the sta-
tus of a new application.

AMENDED APPLICATIONS

Amended applications are expected to be taken up by the 
examiner and an action completed within two months of 
the date the examiner receives the application. Accord-
ingly, a status inquiry is not in order after reply by the attor-
ney until 5 or 6 months have elapsed with no response from 
the Office. A postcard receipt for replies to Office actions, 
adequately and specifically identifying the papers filed, 
will be considered prima facie proof of receipt of such 
papers. Where such proof indicates the timely filing of a 
reply, the submission of a copy of the postcard with a copy 
of the reply will ordinarily obviate the need for a petition to 
revive. Proof of receipt of a timely reply to a final action 
will obviate the need for a petition to revive only if the 
reply was in compliance with 37 CFR 1.113.

IN GENERAL

**

Inquiries as to the status of applications, by persons enti-
tled to the information, should be answered promptly. Sim-
ple letters of inquiry regarding the status of applications 
will be transmitted from the Office of Initial Patent Exami-
nation, to the examining groups for direct action. Such let-
ters will be stamped "Status Letters."

If the correspondent is not entitled to the information, in 
view of 37 CFR 1.14, he or she should be so informed. For 
Congressional and other official inquiries, see MPEP ? 
203.08(a).

**

Telephone inquiries regarding the status of applications, 
by persons entitled to the information, should be directed to 
the group technical support personnel and not to the exam-
iners. In as much as the official records and applications are 
located in the technical support section of the examining 
groups, the technical support personnel can readily provide 
status information without contacting the examiners.

>Processing Status Letters by the Examining Groups 

(A)	All status letters sent to an examining group will 
be delivered to a designated location (e.g., Customer Ser-
vice Office) within the examining group for action. Status 
requests with respect to PCT applications are to be pro-
cessed by the PCT Legal Division and should be forwarded 
to that office for reply. Status information regarding an 
application identified in a published patent document 
should be forwarded to the File Information Unit for reply. 
See MPEP ?  102.

(B)	A designated representative of the examining 
group will review the status letter to determine the nature of 
the request and whether the requester is entitled to receive 
the requested information. PALM Intranet should be used 
to determine whether the requester is entitled to the infor-
mation. If after reviewing the information in PALM it is not 
clear whether the requester is entitled to receive the infor-
mation requested, the examining group representative 
should review the application file to resolve the issue.

(C)	The status letter will normally not be matched 
with the application file except (1) where the status inquiry 
is directed to an abandoned application, and (2) where nec-
essary. Status letters requesting information concerning an 
abandoned application must be matched with the applica-
tion file, entered as a formal paper and assigned a paper 
number. The reply to a status inquiry concerning an aban-
doned application must be entered in the application file 
and assigned a paper number. 

(D)	The examining group representative will deter-
mine the appropriate reply to the status letter by 

(1)	using PALM Intranet to determine the status of 
the application, 

(2)	reviewing the new case dates within the exam-
ining group, 

(3)	reviewing any tracking system for the particular 
item or action at issue,

(4)	discussing the matter with the supervisory 
patent examiner or the examiner in charge of the applica-
tion, or 

(5)	when necessary, reviewing the application file. 

 The examining group representative should discuss the 
matter with an appropriate resource person in the examin-
ing group if it is not clear what the reply should be. 

(E)	The examining group representative may reply to 
a status letter, other than an inquiry directed to an aban-
doned application, by placing a telephone call to the attor-
ney of record. If the status letter requests a date of expected 
action, the reply should make clear that the date provided is 
only an "expected" date of when the examiner will take 
action on the application. If the requester requests that the 
Office provide a written reply to the status letter, the reply 
may be faxed (preferable) or mailed (only if requested) to 
the correspondence address.

(F)	The examining group representative will note the 
reply to the status inquiry on the status letter with the ini-
tials of the examining group representative and the date that 
the reply was completed.

(G)	All examining groups will employ the Status Let-
ter Database to track the progress of the status letters. The 
examining group will retain a record of the reply to the sta-
tus letter. The record includes the entry of the information 
concerning the status letter and the reply into the Status 
Letter Database. The examining group must retain the orig-
inal or a copy of the status letter and in no event is the sta-
tus letter to be disposed of.<             

203.08(a)	Congressional and Other Official 
Inquiries 

Correspondence and inquiries from the White House, 
Members of Congress, embassies, and heads of Executive 
departments and agencies normally are cleared through the 
Office of the Administrator for Legislative and Interna-
tional Affairs.

When persons from the designated official sources 
request services from the Office, or information regarding 
the business of the Office, they should, under long-standing 
instructions, be referred, at least initially, to the Congres-
sional liaison in the Office of Legislative and International 
Affairs.

This procedure is used so that there will be uniformity in 
the handling of contacts from the indicated sources, and 
also so that compliance with directives of the Department 
of Commerce is attained.

Inquiries referred to in this section, particularly corre-
spondence from Congress or the White House, should 
immediately be transmitted to the Administrator for Legis-
lative and International Affairs by messenger, and the Con-
gressional liaison in the Office of Legislative and 
International Affairs should be notified by phone that such 
correspondence has been received.

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