[Federal Register Volume 61, Number 115 (Thursday, June 13, 1996)]
[Notices]
[Pages 30040-30046]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 96-15049]



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[[Page 30041]]


DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. 951019254-6136-02]
RIN 0651-XX05


Change in Procedure Relating to an Application Filing Date

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of change in procedure.

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SUMMARY: The Patent and Trademark Office (PTO) is implementing a change 
in procedure relating to the treatment of applications filed without 
all the pages of the specification or without all of the figures of the 
drawings. Under this new procedure, the PTO will accord a filing date 
to any application that contains something that can be construed as a 
written description, any necessary drawing, and, in a nonprovisional 
application, at least one claim, regardless of whether the application 
is filed without all the pages of the specification or without all of 
the figures of the drawings. Applications filed without all the pages 
of the specification or without all of the figures of the drawings will 
be treated by mailing a notice indicating that the application has been 
accorded a filing date, but is missing pages of the specification of 
figures of drawings.
    The notice will indicate that failure to timely (37 CFR 1.181(f)) 
file a petition under 37 CFR 1.53(c) of 1.182 in response to such 
notice will result in the PTO treating the original application papers 
(the original disclosure of the intention) as including only those 
application papers present in the PTO on the date of deposit.

EFFECTIVE DATE: July 22, 1996.

FOR FURTHER INFORMATION CONTACT:
Robert W. Bahr by telephone at (703) 305-9285, by facsimile at (703) 
308-6916, or Jeffrey V. Nase by telephone at (703) 305-9285, or by mail 
addressed to Box Comments--Patents, Assistant Commissioner for Patents, 
Washington, D.C. 20231.

SUPPLEMENTARY INFORMATION: The PTO is implementing a change in 
procedure relating to the treatment of applications filed without all 
the pages of the specification (Section 608.01 of the Manual of Patent 
Examining Procedure (MPEP)) (e.g., with page numbering revealing that 
page(s) are missing), or without all of the figures of the drawings 
(MPEP 608.02) (e.g., without drawing figures that are mentioned in the 
specification). The procedure set forth in this notice will be 
incorporated into the next revision of the MPEP.
    The current treatment of applications that fail to identify the 
names of the actual inventor(s) (e.g., an application naming the 
inventorship only as ``Jane Doe et al.'') as required by 37 CFR 1.41(a) 
and 1.53(b) is not affected by the adoption of the procedure set forth 
in this notice.
    In a Notice entitled ``Proposed Changes in Procedures Relating to 
an Application Filing Date'' (Filing Date Notice), published in the 
Federal Register at 60 FR 56982-84 (November 13, 1995), and in the PTO 
Official Gazette at 1181 Off. Gaz. Pat. Office  12-13 (December 5, 
1995), the PTO proposed a change in procedure relating to the treatment 
of applications filed without all the pages of the specification or 
without all of the figures of the drawings. In view of the comments 
received in response to the Filing Date Notice, the PTO is adopting the 
proposed change.
    The adopted procedure for the treatment of applications filed 
without all the pages of the specification or without all of the 
figures of the drawings is set forth below.

Applications Filed Without All Pages of Specification

    The Initial Application Examination Division reviews application 
papers to determine whether all of the pages of the specification are 
present in the application. If the application is filed without all of 
the page(s) of the specification, but containing something that can be 
construed as a written description, at least one drawing figure, if 
necessary under 35 U.S.C. 113, the names of all the inventors, and, in 
a nonprovisional application, at least one claim, the Initial 
Application Examination Division will mail a ``Notice of Omitted 
Items'' indicating that the application papers so deposited have been 
accorded a filing date, but are lacking some page(s) of the 
specification.
    The mailing of a ``Notice of Omitted Items'' will permit the 
applicant to either: (1) Promptly establish prior receipt in the PTO of 
the page(s) at issue (generally by way of a date-stamped postcard 
receipt (MPEP 503)), or (2) promptly submit the omitted page(s) in a 
nonprovisonal application and accept the date of such submission as the 
application filing date. An applicant asserting that the page(s) was in 
fact deposited in the PTO with the application papers must file a 
petition under 37 CFR 1.53(c) (and the petition fee under 37 CFR 
1.17(i) (37 CFR 1.17(q) in a provisional application), which will be 
refunded if it is determined that the page(s) was in fact received by 
the PTO with the application papers deposited on filing) with evidence 
of such deposit within two months of the date of the ``Notice of 
Omitted Items'' (37 CFR 1.181(f)). An applicant desiring to submit the 
omitted page(s) in a nonprovisional application and accept the date of 
such submission as the application filing date must file any omitted 
page(s) with an oath or declaration in compliance with 37 CFR 1.63 and 
1.64 referring to such page(s) and a petition under 37 CFR 1.182 (with 
the petition fee under 37 CFR 1.17(h)) requesting the later filing date 
within two months of the date of the ``Notice of Omitted Items'' (37 
CFR 1.181(f)).
    An applicant willing to accept the application as deposited in the 
PTO need not respond to the ``Notice of Omitted Items,'' and the 
failure to file a petition under 37 CFR 1.53(c) or 1.182 (and the 
requisite petition fee) as discussed above within two months of the 
date of the ``Notice of Omitted Items'' (37 CFR 1.181(f)) will be 
treated as constructive acceptance by the applicant of the application 
as deposited in the PTO. Amendment of the specification is required in 
a nonprovisional application to renumber the pages consecutively and 
cancel any incomplete sentences caused by the absence of the omitted 
pages. Such amendment should be by way of preliminary amendment 
submitted prior to the first Office action to avoid delays in the 
prosecution of the application.
    If the application does not contain anything that can be construed 
as a written description, the Initial Application Examination Division 
will mail a Notice of Incomplete Application (PTO-1123) indicating that 
the application lacks the specification required by 35 U.S.C. 112. The 
applicant may file a petition under 37 CFR 1.53(c) (and the petition 
fee under 37 CFR 1.17(i) (37 CFR 1.17(q) in a provisional application)) 
asserting that: (1) the missing specification was submitted, or (2) the 
application papers as deposited contain an adequate written description 
under 35 U.S.C. 112. The petition under 37 CFR 1.53(c) must be 
accompanied by sufficient evidence (37 CFR 1.181(b)) to establish the 
applicant's entitlement to the requested filing date (e.g., a date-
stamped postcard receipt (MPEP 503) to establish prior receipt in the 
PTO of the missing specification). Alternatively, the applicant may 
submit the omitted specification, including at least one claim in a 
nonprovisional application, accompanied by an oath or declaration in 
compliance with 37 CFR 1.63 and 1.64 referring to the specification 
being submitted and accept the date of such submission as the 
application filing date.

[[Page 30042]]

    Original claims form part of the original disclosure and provide 
their own written description See In re Anderson, 471 F.2d 1237, 176 
USPQ 331 (CCPA 1973). As such, an application that contains at least 
one claim, but dues not contain anything which can be construed as a 
written description of such claim(s), would be unusual.

Nonprovisional Applications Filed Without at Least One Claim

    35 U.S.C. 111(a)(2) requires that an application for patent 
include, inter alia, ``a specification as prescribed by section 112 of 
this title,'' and 35 U.S.C. 111(a)(4) provides that the ``filing date 
of an application shall be the date on which the specification and any 
required drawing are received in the Patent and Trademark Office.'' 35 
U.S.C. 112, first paragraph, provides, in part, that ``[t]he 
specification shall contain a written description of the invention,'' 
and 35 U.S.C. 112, second paragraph, provides that ``[t]he 
specification shall conclude with one or more claims particularly 
pointing out and distinctly claiming the subject matter which the 
applicant regards as his invention.'' Also, the Court of Appeals for 
the Federal Circuit stated in Litton Systems, Inc. v. whirlpool Corp.:

    Both statute, 35 U.S.C. 111[(a)], and federal regulations, 37 
CFR 1.151[(a)(1)], make clear the requirement that an application 
for a patent must include * * * a specification and claims. * * * 
The omission of any one of these component parts makes a patent 
application incomplete and thus not entitled to a filing date.

728 F.2d 1423, 1437, 221 USPQ 97, 105 (Fed. Cir. 1984) (citing Gearon 
v. United States, 121 F.Supp 652, 654, 101 USPQ 460, 461 (Ct. Cl. 
1954), cert. denied, 348 U.S. 942, 104 USPQ 409 (1955)) (emphasis in 
the original).
    Therefore, in an application filed under 35 U.S.C. 111(a), a claim 
is a statutory requirement for according a filing date to the 
application. 35 U.S.C. 162 and 171 make 35 U.S.C. 112 applicable to 
plant and design applications, and 35 U.S.C. 162 specifically requires 
the specification in a plant patent application to contain a claim. 35 
U.S.C. 111(b)(2), however, provides that ``[a] claim, as required by 
the second through fifth paragraphs of section 112, shall not be 
required in a provisional application.'' Thus, with the exception of 
provisional applications filed under 35 U.S.C. 111(b), any application 
filed without at least one claim is incomplete and not entitled to a 
filing date.
    If a nonprovisional application does not contain at least one 
claim, a ``Notice of Incomplete Application'' will be mailed to the 
applicant(s) indicating that no filing date has been granted and 
setting a period for submitting a claim. The filing date will be the 
date of receipt of at least one claim. See In re Mattson, 208 USPQ 168 
(Comm'r Pats. 1980).
    As 37 CFR 1.53(b)(2)(ii) permits the conversion of an application 
filed under 35 U.S.C. 111(a) to an application under 35 U.S.C. 111(b), 
an applicant in an application, other than for a design patent, filed 
under 35 U.S.C. 111(a) on or after June 8, 1995, without at least one 
claim has the alternative of filing a petition under 37 CFR 
1.53(b)(2)(ii) to convert such application into an application under 35 
U.S.C. 111(b), which does not require a claim to be entitled to its 
date of deposit as a filing date. Such a petition, however, must be 
filed prior to the expiration of twelve months after the date of 
deposit of the application under 35 U.S.C. 111(a), and comply with the 
other requirements of 37 CFR 1.53(b)(20(ii).

Applications Filed Without Any Drawings

    35 U.S.C. 111(a)(2)(B) and 111(b)(2)(B) each provide, in part, that 
an ``application shall include * * * a drawing as prescribed by section 
113 of this title'' and 35 U.S.C. 111(a)(4) and 111(b)(4) each provide, 
in part, that the ``filing date * * * shall be the date on which * * * 
any required drawing are received in the Patent and Trademark Office.'' 
35 U.S.C. 113 in turn provides that an ``applicant shall furnish a 
drawing where necessary for the understanding of the subject matter 
sought to be patented.''
    Applications filed without drawings are initially inspected to 
determine whether a drawing is referred to in the specification, and if 
not, whether a drawing is necessary for an understanding of the 
invention. 35 U.S.C. 113.
    In general, it has been PTO practice to treat an application that 
contains at least one process or method claim as an application for 
which a drawing is not necessary for an understanding of the invention 
under 35 U.S.C. 113. The same practice has been followed in composition 
applications. Other situations in drawings are usually not considered 
necessary for an understanding of the invention under 35 U.S.C. 113 
are:
    I. Coated articles or products: where the invention resides solely 
in coating or impregnating a conventional sheet (e.g., paper or cloth, 
or an article of known and conventional character with a particular 
composition), unless significant details of structure or arrangement 
are involved in the article claims;
    II. Articles made from a particular material or composition: where 
the invention consists in making an article of a particular material or 
composition, unless significant details of structure or arrangement are 
involved in the article claims;
    III. Laminated Structures: where the claimed invention involves 
only laminations of sheets (and coatings) of specified material unless 
significant details of structure or arrangement (other than the mere 
order of the layers) are involved in the article claims; or
    IV. Articles, apparatus or systems where sole distinguishing 
feature is presence of a particular material: where the invention 
resides solely in the use of a particular material in an otherwise old 
article, apparatus or system recited broadly in the claims, for 
example:
    a. A hydraulic system distinguished solely by the use therein of a 
particular hydraulic fluid;
    b. Packaged sutures wherein the structure and arrangement of the 
package are conventional and the only distinguishing feature is the use 
of a particular material.
    A nonprovisional application having at least one claim, or a 
provisional application having at least some disclosure, directed to 
the subject matter discussed above for which a drawing is usually not 
considered essential for a filing date, not describing drawing figures 
in the specification, and filed without drawings will usually be 
processed for examination, so long as the application contains 
something that can be construed as a written description and the names 
of all the inventors. A nonprovisional application having at least one 
claim, or a provisional application having at least some disclosure, 
directed to the subject matter discussed above for which a drawing is 
usually not considered essential for a filing date, describing drawing 
figure(s) in the specification, but filed without drawings will be 
treated as an application filed without all of the drawing figures 
referred to in the specification as discussed below, so long as the 
application contains something that can be construed as a written 
description and the names of all the inventors. In a situation in which 
the appropriate examining group determines that drawings are necessary 
under 35 U.S.C. 113 the filing date issue will be reconsidered on 
reference from the examining group.
    If a nonprovisional application does not have at least one claim, 
or a provisional application does not have at

[[Page 30043]]

least some disclosure, directed to the subject matter discussed above 
for which a drawing is usually not considered essential for a filing 
date, and is filed without drawings, the Initial Application 
Examination Division will mail a ``Notice of Incomplete Application'' 
indicating that the application lacks drawings and that 35 U.S.C. 113 
requires a drawing where necessary for the understanding of the subject 
matter sought to be patented.
    The application may file a petition under 37 CFR 1.53(c) (and the 
petition fee under 37 CFR 1.17(i) (37 CFR 1.17(q) in a provisional 
application) asserting that (1) the drawing(s) at issue was submitted, 
or (2) the drawing(s) is not necessary under 35 U.S.C. 113 for a filing 
date. The petition must be accompanied by sufficient evidence to 
establish the applicant's entitlement to the requested filing date 
(e.g., a date-stamped postcard receipt (MPEP 503) to establish prior 
receipt in the PTO of the drawing(s) at issue). Alternatively, the 
applicant may submit drawing(s) accompanied by an oath or declaration 
in compliance with 37 CFR 1.63 and 1.64 referring to the drawing(s) 
being submitted and accept the date of such submission as the 
application filing date.
    In design applications, the Initial Application Examination 
Division will mail a ``Notice of Incomplete Application'' indicating 
that the application lacks the drawings required under 35 U.S.C. 113. 
The applicant may: (1) Promptly file a petition under 37 CFR 1.53(c) 
(and the petition fee under 37 CFR 1.17(i)) asserting that the missing 
drawing(s) was submitted, or (2) promptly submit drawing(s) accompanied 
by an oath or declaration in compliance with 37 CFR 1.63 and 1.64 and 
accept the date of such submission as the application filing date. 37 
CFR 1.154(a) provides that the claim in a design application ``shall be 
in formal terms to the ornamental design for the article (specifying 
name) as shown, or as shown and described.'' As such, petitions under 
37 CFR 1.53(c) asserting that drawings are unnecessary under 35 U.S.C. 
113 for a filing date in a design application will not be found 
persuasive.

Applications Filed Without All Figures of Drawings

    The Initial Application Examination Division reviews application 
papers to determine whether all mentioned drawing figures in the 
specification are present in the application. If the application is 
filed without all of the drawing figure(s) referred to in the 
specification, and the application contains something that can be 
construed as a written description, at least one drawing, if necessary 
under 35 U.S.C. 113, the names of all the inventors, and, in a 
nonprovisional application, at least one claim, the Initial Application 
Examination Division will mail a ``Notice of Omitted Items'' indicating 
that the application papers so deposited have been accorded a filing 
date, but are lacking some of the drawings described in the 
specification.
    The mailing of a ``Notice of Omitted Items'' will permit the 
applicant to either: (1) Promptly establish prior receipt in the PTO of 
the drawing(s) at issue (generally by way of a date-stamped postcard 
receipt (MPEP 503)), or (2) promptly submit the omitted drawing(s) in a 
nonprovisional application and accept the date of such submission as 
the application filing date. An applicant asserting that the drawing(s) 
was in fact deposited in the PTO with the application papers must file 
a petition under 37 CFR 1.53(c) (and the petition fee under 37 CFR 
1.17(i) (37 CFR 1.17(q) in a provisional application), which will be 
refunded if it is determined that the drawing(s) was in fact received 
by the PTO with the application papers deposited on filing) with 
evidence of such deposit within two months of the date of the ``Notice 
of Omitted Items'' (37 CFR 1.181(f)). An applicant desiring to submit 
the omitted drawings in a nonprovisional application and accept the 
date of such submission as the application filing date must file any 
omitted drawing(s) with an oath or declaration in compliance with 37 
CFR 1.63 and 1.64 referring to such drawing(s) and a petition under 37 
CFR 1.182 (with the petition fee under 37 CFR 1.17(h)) requesting the 
later filing date within two months of the date of the ``Notice of 
Omitted Items'' (37 CFR 1.181(f)).
    An applicant willing to accept the application as deposited in the 
PTO need not respond to the ``Notice of Omitted Items,'' and the 
failure to file a petition under 37 CFR 1.53(c) or 1.182 (and the 
requisite petition fee) as discussed above within two months of the 
date of the ``Notice of Omitted Items'' (37 CFR 1.181(f)) will be 
treated as constructive acceptance by the applicant of the application 
as deposited in the PTO. Amendment of the specification is required in 
a nonprovisional application to cancel all references to the omitted 
drawing, both in the brief and detailed descriptions of the drawings 
and including any reference numerals shown only in the omitted 
drawings. In addition, a separate letter is required in nonprovisional 
application to renumber the drawing figures consecutively (showing the 
proposed changes in red ink), if necessary, and amendment of the 
specification is required to correct the references to the drawing 
figures to correspond with any relabelled drawing figures, both in the 
brief and detailed descriptions of the drawings. Such amendment and 
correction to the drawing figures, if necessary, should be by way of 
preliminary amendment submitted prior to the first office action to 
avoid delays in the prosecution of the application.

Subsequent Treatment of Application

    In instances in which a ``Notice of Incomplete Application'' has 
been mailed, further action by the applicant is necessary for the 
application to be accorded a filing date. As such, the application will 
be retained in the Initial Application Examination Division to await 
such action. Unless the applicant either completes the application or 
files a petition under 27 CFR 1.53(c) (and the petition fee under 37 
CFR 1.17(i) or 1.17(q)) within the period set in the ``Notice of 
Incomplete Application,'' the application will be processed as an 
incomplete application under 37 CFR 1.53(c).
    In instances in which a ``Notice of Omitted Items'' has been 
mailed, the application will be retained in the Initial Application 
Examination Division for a period of two months from the mailing date 
of ``Notice of Omitted Items'' to permit the applicant to either: (1) 
Establish prior receipt in the PTO of the page(s) or drawing(s) at 
issue, or (2) promptly submit the omitted page(s) or drawing(s) in a 
nonprovisional application and accept the date of such submission as 
the application filing date. Extensions of time under 37 CFR 1.136 will 
not be applicable to this two-month time period.
    The grant of a petition under 37 CFR 1.182 to accept the omitted 
page(s) or drawing(s) in a nonprovisional application and accord the 
date of such submission as the application filing date will be 
indicated by the issuance of a new filing receipt indicating the filing 
date accorded the application.
    Unless the applicant timely files a petition under 37 CFR 1.53(c) 
or 1.182 (and the requisite petition fee), the application will 
maintain the filing date as of the date of deposit of the application 
papers in the PTO, and the original application papers (i.e., the 
original disclosure of the invention) will include only those 
application papers present in the PTO on the date of deposit. 
Nonprovisional applications that are complete under 35 CFR

[[Page 30044]]

1.51(a)(1) will then be forwarded to the appropriate examining group 
for examination of the application. Provisional applications that are 
complete under 35 CFR 1.51(a)(2) will then be forwarded to Files 
Repository. The current practice for treating applications that are not 
complete under 37 CFR 1.51(a) will remain unchanged (37 CFR 1.53(d)).
    Any petition under 37 CFR 1.53(c) or 1.182 not filed within this 
two-month period may be dismissed as untimely. 37 CFR 1.181(f). Under 
the adopted procedure, the PTO may strictly adhere to the two-month 
period set forth in 37 CFR 1.181(f), and dismiss as untimely any 
petition not filed within this two-month period. This strict adherence 
to the two-month period set forth in 37 CFR 1.181(f) is justified as 
such applications will now be forwarded for examination at the end of 
this two-month period. It is further justified in instances in which 
the applicant seeks to submit the omitted page(s) or drawing(s) in a 
nonprovisional application and request the date of such submission as 
the application filing date since: (1) According the application a 
filing date later than the date of deposit may affect the date of 
expiration of any patent issuing on the application due to the changes 
to 35 U.S.C. 154 contained in Public Law 103-465, Sec. 532, 108 Stat. 
4809 (1994), and (2) the filing of a continuation-in-part application 
is a sufficiently equivalent mechanism for adding additional subject 
matter to avoid the loss of patent rights.
    The submission of omitted page(s) or drawing(s) in a nonprovisional 
application and acceptance of the date of such submission as the 
application filing date is tantamount to simply filing a new 
application. Thus, applicants should consider filing a new application 
as an alternative to submitting a petition under 37 CFR 1.182 (with the 
petition fee under 37 CFR 1.17(h)) with any omitted page(s) or 
drawing(s), which is a cost-effective alternative in instances in which 
an nonprovisional application is deposited without filing fees. 
Likewise, in view of the relatively low filing fee for provisional 
applications, and the PTO's desire to minimize the processing of 
provisional applications, the PTO will not grant petitions under 37 CFR 
1.182 to accept omitted page(s) or drawing(s) and accord an application 
filing date as of the date of such submission. Instead, the applicant 
should simply refile the complete provisional application.

Response to Comments

    Thirteen comments were received in response to the Filing Date 
Notice. Nine comments expressly supported the proposed change, while 
the remaining four comments simply made additional comments or 
suggested additional changes, but did not oppose the proposed change. 
The written comments have been analyzed, and responses to the comments 
follow.
    Comment (1): One comment suggested that the PTO should, by 
rulemaking, permit the addition of subject matter in a foreign 
application for which priority is claimed.
    Response: Where an application includes in the papers deposited on 
filing with the application a certified copy of a foreign application 
for which priority is claimed, the PTO will grant a timely petition 
under 37 CFR 1.182 requesting that: (1) the corresponding sheets of 
drawings in the foreign priority application be accepted for any 
omitted sheets of drawings in the application, or (2) the foreign 
priority application be accepted as the application as filed, which may 
result in the treatment of the foreign priority application as an 
application filed in a non-English language (37 CFR 1.52(d)).
    In instances in which the foreign priority application was not 
present among the papers deposited on filing with the application, any 
addition of subject matter from the foreign priority application into 
the application must be considered as new matter under 35 U.S.C. 132 
(and, as such, will not be permitted by petition), unless the 
application-as-filed specifically incorporates the foreign priority 
application by reference.
    Drawing figures do not require translation of the subject matter 
shown therein and individual drawing figures are sufficiently 
segregated that it is considered appropriate to permit, by petition 
under 37 CFR 1.182, the acceptance of the corresponding sheets of 
drawings in the foreign priority application for any omitted sheets of 
drawings in the application. The specification of a foreign priority 
application, however, is generally subject to translation and revision 
prior to its filing in the PTO as the specification of an application. 
As such, it is considered appropriate to permit, by petition under 37 
CFR 1.182, the acceptance of a foreign priority application as the 
application as filed, but it is not considered acceptable to permit the 
acceptance of a translation of portions of the foreign priority 
application for omitted pages of the specification.
    Finally, the occurrence of situations in which it is necessary for 
an applicant to request that the corresponding sheets of drawings in 
the foreign priority application be accepted for any omitted sheets of 
drawings in the application, or the foreign priority application be 
accepted as the application as filed is relatively rare. In addition, 
the treatment of these few applications on an ad hoc basis pursuant to 
37 CFR 1.182 and 1.183 has proven acceptable.
    Comment (2): One comment suggested that the PTO should consider 
requiring a declaration from the attorney averring that the omitted 
matter was inadvertently omitted.
    Response: First, in view of a registered practitioner's 
responsibilities as set forth in 37 CFR Part 10, the PTO does not 
generally require verification of statements by registered 
practitioners. See, e.g., 37 CFR 1.125 and 1.137. Second, as there is 
no apparent benefit to omitting material from an application as 
deposited in the PTO, there appears to be little justification for 
requiring even a statement that the omitted matter was inadvertently 
omitted.
    Comment (3): One comment questioned whether the change would be 
applicable to applications filed under 37 CFR 1.60 or 1.62.
    Response: The adopted procedure applies to applications filed under 
37 CFR 1.53.
    37 CFR 1.60 requires, inter alia, that the application be a true 
copy of the prior application (37 CFR 1.60(b)(2)), and a copy that 
omits pages of specification or sheets of drawings from the prior 
application is not a true copy of the prior application. As such, a 
copy that omits pages of specification or sheets of drawings from the 
prior application is an improper application under 37 CFR 1.60, and 
cannot be accorded a filing date as an application under 37 CFR 1.60 
until the filing error is corrected.
    The PTO considers 37 CFR 1.60 to be unnecessary in view of changes 
to 37 CFR 1.4(d), and a trap for the unwary. The PTO has previously 
proposed to eliminate 37 CFR 1.60 (See notice of proposed rulemaking 
entitled ``Changes to Implement 20-Year Patent Term and Provisional 
Application'' (20-Year Term Notice of Proposed Rulemaking) published in 
the Federal Register at 59 FR 63951 (December 12, 1994), and in the 
Patent and Trademark Office Official Gazette at 1170 Off. Gaz. Pat. 
Office 377 (January 3, 1995)), and will again propose to eliminate 37 
CFR 1.60, as well as 37 CFR 1.62, in an impending rulemaking to 
implement the Administration's regulatory reform initiative.
    A continuation or divisional application may be filed under 35 
U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b)(1), by 
providing

[[Page 30045]]

a copy of the prior application, including a copy of the oath or 
declaration in such prior application, as filed. The patent statutes 
and rules of practice do not require that an oath or declaration 
include a recent date of execution, and the Examining Corps has been 
directed not to object to an oath or declaration as lacking either a 
recent date of execution or any date of execution. This change in 
examining practice will appear in the next revision of the MPEP. As is 
currently the situation under 37 CFR 1.60 and 1.62, the applicant's 
duty of candor and good faith including compliance with the duty of 
disclosure requirements of Sec. 1.56 is continuous and applies to the 
continuation or divisional application, notwithstanding the lack of a 
newly executed oath or declaration.
    37 CFR 1.60(b)(4) and 1.62(a) currently permit the filing of a 
continuation or divisional application by less than all of the 
inventors named in a prior application without a newly executed oath or 
declaration. The oath or declaration in an application filed under 37 
CFR 1.53(b), however, must identify the inventorship of such 
application. Thus, unless it is necessary to file a continuation or 
divisional application under 37 CFR 1.60 to name less than all of the 
inventors named in a prior application, applicants are encouraged to 
file continuing applications under 37 CFR 1.53(b) (i.e., omit any 
reference to 37 CFR 1.60 in the application papers) to avoid an 
inadvertent failure to comply with all of the requirements of 37 CFR 
1.60.
    An application under 37 CFR 1.62 uses the content of the prior 
application, and is itself only a request for an application under 37 
CFR 1.62. As such, there is no concern that an application under 37 CFR 
1.62 will be filed without all the pages of the specification or 
without all of the figures of the drawings.
    Comment (4): One comment questioned whether a filing date would be 
accorded if the name of an inventor were omitted.
    Response: 37 CFR 1.41 and 1.53 currently require that an 
application be filed in the name of the actual inventor or inventors, 
and this notice does not involve changes to the rules of practice. The 
PTO will propose to eliminate this requirement in 37 CFR 1.41 and 1.53 
in the rulemaking to implement the Administration's regulatory reform 
initiative.
    Comment (5): One comment suggested that the notices be mailed out 
as soon as possible to avoid a loss of rights for those applicants who 
require completion or refiling of the application. Another comment 
suggested that the decision as to whether an application is 
``incomplete'' should be made by the Examining Corps, rather than on a 
formalistic basis by the Initial Application Examination Division.
    Response: The efficient pre-examination processing of applications 
is in the mutual interest of the PTO and applicants. The PTO is 
currently in the process of modifying its pre-examination processing 
procedures to avoid any unnecessary delay. This new procedure will not 
impact the pre-examination processing of applications, in that the 
Initial Application Examination Division will mail a ``Notice of 
Incomplete Application,'' ``Notice of Omitted Items,'' and ``Notice to 
File Missing Parts'' under this new procedure at the time the ``Notice 
of Incomplete Application'' and ``Notice to File Missing Parts'' are 
currently mailed.
    The adopted procedure replaces formalistic procedures with 
procedures based upon the requirements for a filing date as set forth 
in 35 U.S.C. 111, 112, and 113. Filing date issues are ultimately 
decided by the Office of Petitions in the Office of the Deputy 
Assistant Commissioner for Patent Policy and Projects (MPEP 1002.02(b) 
(35)) on the basis of whether and when the application meets the 
requirements for a filing date as set forth in 35 U.S.C. 111, 112, and 
113, and not on the basis of who made the initial decision not to 
accord a filing date to the application.
    It should be recognized that there is tension between the comments 
objecting to any review of the entitlement of an application to a 
filing date by the Initial Application Examination Division (arguing 
that this issue should be considered only the Examining Corps) and the 
desire for speedy notification to the applicant that a portion of the 
application appears to have been omitted. To defer all review of the 
entitlement of an application to a filing date until the application is 
picked-up for examination would cause a significant delay in any such 
notification to the applicant.
    Comment (6): One comment noted that 35 U.S.C. 111(b) does not 
require a claim for a provisional application. Several comments 
suggested that the PTO automatically treat any nonprovisional 
application filed without at least one claim as a provisional 
application, if such application is otherwise entitled to a filing date 
as a provisional application.
    Response: A provisional application does not require a claim to be 
entitled to a filing date. As discussed supra, an applicant in an 
application, other than for a design patent, filed under 35 U.S.C. 
111(a) on or after June 8, 1995, without at least one claim has the 
alternative of filing a petition under 37 CFR 1.53(b)(2)(ii) to convert 
such application into an application under 35 U.S.C. 111(b). The PTO 
does not consider it appropriate to ``automatically'' consider an 
application filed under 35 U.S.C. 111(a) without a claim to be an 
application under 35 U.S.C. 111(b) (a provisional application), since 
the applicant may not desire an application under 35 U.S.C. 111(b), and 
may desire to file a claim to obtain an application filing date as of 
the date of submission of such claim.
    Comment (7): One comment suggested that the MPEP should clearly 
indicate that applications filed without all the pages of specification 
or all the figures of drawings described in the specification cannot 
automatically be treated as defective under 35 U.S.C. 112, but must be 
considered for compliance with 35 U.S.C. 112 by the subject matter that 
is present in the application papers.
    Response: In an effort to improve the examination of applications, 
chapter 2100 of the MPEP has been revised to set forth specific 
guidelines for rejections under 35 U.S.C. 101, 102, 103, and 112. MPEP 
2161 et seq. set forth the guidelines for rejections under 35 U.S.C. 
112, first and second paragraphs, and do not authorize a rejection 
under 35 U.S.C. 112 based merely upon the fact that pages of 
specification or figures of drawing were omitted.
    Comment (8): One comment questioned whether the proposed procedure 
for the treatment of applications filed without all the pages of 
specification or all the figures of drawings described in the 
specification is applicable to provisional applications, noting that 35 
U.S.C. 111(b) provides that a claim is not required in a provisional 
application.
    Response: The adopted procedure applies to applications (both 
provisional and nonprovisional) filed under 37 CFR 1.53. The procedure 
recognizes that 35 U.S.C. 111(b) does not require a claim in a 
provisional application.
    Comment (9): One comment suggested that the two-month period for 
taking action would be unfair in instances in which the PTO prepares 
and enters the notice into the Patent Application Locating and 
Monitoring (PALM) system but fails to mail the notice or mails the 
notice to an incorrect correspondence address.
    Response: The ``Notice of Omitted Items'' is not an action within 
the meaning of 35 U.S.C. 113 to which a response is required to avoid

[[Page 30046]]

abandonment. An applicant simply has the opportunity to file a 
petition, but need not take action, in response to a ``Notice of 
Omitted Items.'' Thus, the timeliness of any such petition is governed 
by 37 CFR 1.181(f). 37 CFR 1.181(f) provides that any petition not 
filed within two months from the action complained of may be dismissed 
as untimely.
    Establishing prior receipt in the PTO of the page(s) or drawing(s) 
at issue or submitting the omitted page(s) or drawings(s) and accepting 
the date of such submission as the application filing date would result 
in an addition to the papers constituting the original disclosure of 
the application, and submitting the omitted page(s) or drawings(s) and 
accepting the date of such submission as the application filing date 
would result in a change in application filing date. As a change in 
either the original disclosure or filing date of an application would 
interfere with the examination of the application for compliance with 
35 U.S.C. 102, 103, and 112, the PTO will not forward an application in 
which a ``Notice of Omitted Items'' has been mailed for examination 
until it is apparent that the applicant has not responded to the 
``Notice of Omitted Items.'' Thus, a nonprovisional application will 
not be processed for examination, and the examination of the 
application will be delayed, until the expiration of two months from 
the mailing date of ``Notice of Omitted Items.'' The two-month period 
set forth in 37 CFR 1.181(f) is considered an appropriate balance 
between providing an applicant sufficient time to take action in 
response to a ``Notice of Omitted Items'' and avoiding unnecessary 
delays in the examination of the application, which would be 
undesirable in view of 35 U.S.C. 154 as amended by Public Law 103-465. 
While an applicant willing to accept a nonprovisional application as 
deposited in the PTO need not respond to the ``Notice of Omitted 
Items,'' the filing of an express communication to that effect would 
permit the PTO to proceed with the processing of the application for 
examination, and, as such, may reduce the delay in the examination of 
the application.
    While a ``Notice of Omitted Items'' is not an action within the 
meaning of 35 U.S.C. 133, the principles regarding nonreceipt or 
delayed receipt of a ``Notice of Omitted Items,'' due either to a 
failure on the part of the PTO to properly mail such notice or a 
failure on the part of the U.S. Postal Service to deliver such notice 
to the correspondence address in a timely manner, are applicable to the 
nonreceipt or delayed receipt of a ``Notice of Omitted Items.'' 
Applicants are directed to the Notice entitled ``Withdrawing the 
Holding of Abandonment when Office Actions Are Not Received,'' 
published in the PTO Official Gazette at 1156, Off. Gaz. Pat. Office 53 
(November 16, 1993), for the evidence necessary to establish nonreceipt 
of a ``Notice of Omitted Items,'' and the Notice entitled ``Procedures 
For Restarting Response Periods,'' published in the PTO Official 
Gazette at 1160 Off. Gaz. Pat. Office 14 (March 1, 1994), for the 
evidence necessary to establish delayed receipt of a ``Notice of 
Omitted Items.''
    Comment (10): One comment suggested that while the proposed 
procedure is an improvement, it still conflicts with 35 U.S.C. 112 and 
113. The comment specifically argues that the sufficiency of an 
application is a matter for determination by an examiner skilled in the 
subject matter of the application, in that Congress did not intend that 
the sufficiency of an application be determined by the Initial Patent 
Examination Division.
    Response: The adopted procedure will accord a filing date to any 
application that contains something that can be construed as a written 
description, any necessary drawing, and, in a nonprovisional 
application, at least one claim. This procedure is consistent with the 
requirements for a filing date as set forth in 35 U.S.C. 111, 112, and 
113. 35 U.S.C. 113, second sentence, contemplates that drawings may be 
filed after the filing date of an application. 35 U.S.C. 113, however, 
provides that an ``application shall furnish a drawing where necessary 
for the understanding of the subject matter sought to be patented,'' 
and 35 U.S.C. 111(a)(4) and 111(b)(4) each provide, in part, that the 
``filing date * * *  shall be the date on which * * *  any required 
drawing are received in the Patent and Trademark Office.'' As such, the 
PTO has the statutory authority, and responsibility, to determine 
whether a drawing is necessary under 35 U.S.C. 113 in an application 
filed without drawings prior to according a filing date to that 
application.
    There is nothing in 35 U.S.C. 111, 112, or 113 that limits the 
authority of the Commissioner to delegate the determination of whether 
or when any application meets the requirements for a filing date as set 
forth in 35 U.S.C. 111, 112, and 113. In any event, filing date issues 
are, as discussed supra, ultimately decided by Office of the Deputy 
Assistant Commissioner for Patent Policy and Projects on the basis of 
whether and when the application meets the requirements for a filing 
date as set forth in 35 U.S.C. 111, 112, and 113, and not on the basis 
of who made the initial decision not to accord a filing date to the 
application.
    Comment (11): One comment suggested that the proposed procedure be 
adopted by rulemaking. Another comment suggested that the proposed 
procedure either be adopted by rulemaking or clearly set forth in the 
MPEP.
    Response: 37 CFR 1.53(b)(1) provides that the ``filing date of an 
application for patent filed under this section, except for a 
provisional application, is the date on which a specification 
containing a description pursuant to Sec. 1.71 and at least one claim 
pursuant to Sec. 1.75; and any drawing required by Sec. 1.81(a), are 
filed in the Patent and Trademark Office in the name of the actual 
inventor or inventors as required by Sec. 1.41.'' 37 CFR 1.53(b)(2) 
provides that the ``filing date of a provisional application is the 
date on which: a specification as prescribed by 35 U.S.C. 112, first 
paragraph; and any drawing required by Sec. 1.81(a), are filed in the 
Patent and Trademark Office in the name of the actual inventor or 
inventors as required by Sec. 1.41.'' Thus, no change to the rules of 
practice is necessary to adopt the procedure set forth in this notice.
    It should be noted that the MPEP 608.01 sets forth the former 
procedure for treating an application filed without all of the pages of 
specification or filed under 35 U.S.C. 111(a) without at least one 
claim. Likewise, MPEP 608.02 sets forth the former procedure for 
treating an application filed without drawings or all of the figures of 
drawings.
    The next revision of the MPEP will incorporate the change in 
procedure set forth in this notice.

    Dated: June 5, 1996.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 96-15049 Filed 6-12-96; 8:45 am]
BILLING CODE 3510-16-M