MPEP § 217 — MPEP § 217
Current through: 2022-07-01

217-Incorporation by Reference Under 37 CFR 1.57(b) 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0200 

 Section 217 
 

 
 
 
 
 
 217 Incorporation by Reference Under 37 CFR
 1.57(b) [R-07.2015]
 

 
 37 CFR 1.57 Incorporation by reference. 

 *****

 
 (b) Subject to the conditions and requirements of this
 paragraph, if all or a portion of the specification or drawing(s) is inadvertently
 omitted from an application, but the application contains a claim under §
 1.55 for priority of a prior-filed foreign application, or
 a claim under § 1.78 for the benefit of a
 prior-filed provisional, nonprovisional, or international application, that was
 present on the filing date of the application, and the inadvertently omitted
 portion of the specification or drawing(s) is completely contained in the
 prior-filed application, the claim under § 1.55 or § 1.78 
 shall also be considered an incorporation by reference of the prior-filed
 application as to the inadvertently omitted portion of the specification or
 drawing(s).
 
 (1) The application must be amended to include the
 inadvertently omitted portion of the specification or drawing(s) within any
 time period set by the Office, but in no case later than the close of
 prosecution as defined by § 1.114(b) , or abandonment
 of the application, whichever occurs earlier. The applicant is also required
 to:
 
 (i) Supply a copy of the prior-filed
 application, except where the prior-filed application is an
 application filed under 35 U.S.C. 111 ;
 

 (ii) Supply an English language translation
 of any prior-filed application that is in a language other than
 English; and
 

 (iii) Identify where the inadvertently omitted
 portion of the specification or drawings can be found in the
 prior-filed application.
 

 
 

 (2) Any amendment to an international application
 pursuant to paragraph (b)(1) of this section shall be effective only as to
 the United States, and shall have no effect on the international filing date
 of the application. In addition, no request under this section to add the
 inadvertently omitted portion of the specification or drawings in an
 international application designating the United States will be acted upon
 by the Office prior to the entry and commencement of the national stage
 ( §
 1.491 ) or the filing of an application under
 35
 U.S.C. 111(a) which claims benefit of the
 international application. Any omitted portion of the international
 application which applicant desires to be effective as to all designated
 States, subject to PCT Rule 20.8(b) , must
 be submitted in accordance with PCT Rule 20 . 
 

 (3) If an application is not otherwise entitled to a
 filing date under § 1.53(b) , the amendment
 must be by way of a petition pursuant to § 1.53(e) accompanied by the fee
 set forth in § 1.17(f) . 
 

 (4) Any amendment to an international design
 application pursuant to paragraph (b)(1) of this section shall be effective
 only as to the United States and shall have no effect on the filing date of
 the application. In addition, no request under this section to add the
 inadvertently omitted portion of the specification or drawings in an
 international design application will be acted upon by the Office prior to
 the international design application becoming a nonprovisional
 application.
 

 
 

 
 *****

 
 I. IN GENERAL 37 CFR
 1.57(b) (formerly 37 CFR 1.57(a) ) provides that if all
 or a portion of the specification or drawing(s) is inadvertently omitted from an
 application, but the application contains a claim under 37 CFR 1.55 
 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 
 for the benefit of a prior-filed provisional, nonprovisional, international, or
 international design application that was present on the filing date of the application,
 and the inadvertently omitted portion of the specification or drawing(s) is completely
 contained in the prior-filed application, the claim for priority or benefit shall be
 considered an incorporation by reference of the prior-filed application as to the
 inadvertently omitted portion of the specification or drawings.
 

 The purpose of 37 CFR
 1.57(b) is to provide a safeguard for applicants when a page(s) of
 the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion
 thereof, is (are) inadvertently omitted from an application, such as through a clerical
 error. It allows inadvertently omitted material to be added to the application by way of
 a later-filed amendment if the inadvertently omitted portion of the specification or
 drawing(s) is completely contained in the prior-filed application even though there is
 no explicit incorporation by reference of the prior-filed application. For a discussion
 of explicit incorporation by reference statements, see MPEP § 608.01(p) .
 

 II. CONDITIONS AND REQUIREMENTS OF 37 CFR 1.57(b) The following conditions and requirements need to be met
 for an applicant to add omitted material to an application pursuant to 37 CFR
 1.57(b) :
 

 
 (A) the application must have been filed on or after
 September 21, 2004;
 

 (B) all or a portion of the specification or drawing(s)
 must have been inadvertently omitted from the application;
 

 (C) a claim under 37 CFR
 1.55 for priority of a prior-filed foreign application, or a
 claim under 37 CFR 1.78 for the benefit of a prior-filed provisional,
 nonprovisional, international, or international design application, must have been
 present on the filing date of the application;
 

 (D) the inadvertently omitted portion of the
 specification or drawing(s) must be completely contained in the prior-filed
 application;
 

 (E) applicant must file an amendment to include the
 inadvertently omitted portion of the specification or drawing(s) within any time
 period set by the Office, but in no case later than the close of prosecution as
 defined by 37
 CFR 1.114(b) , or abandonment of the application, whichever
 occurs earlier;
 

 (F) if the application is not otherwise entitled to a
 filing date, applicant must also file a petition under 37 CFR
 1.53(e) accompanied by the petition fee set forth in
 37 CFR 1.17(f) ;
 

 (G) applicant must supply a copy of the prior-filed
 application, except where the prior-filed application is an application filed
 under 35
 U.S.C. 111 ;
 

 (H) applicant must supply an English language
 translation of any prior-filed application that is in a language other than
 English; and
 

 (I) applicant must identify where the inadvertently
 omitted portion of the specification or drawing(s) can be found in the prior-filed
 application.
 

 A. Application Filed On or After September 21, 2004 The provisions set forth in 37 CFR
 1.57(b) became effective on September 21, 2004 and apply to
 applications filed on or after that date. Thus, an application that inadvertently
 omits material must have been filed on or after September 21, 2004 in order for
 37 CFR
 1.57(b) to apply. Applicants may, however, rely on prior-filed
 applications filed before September 21, 2004 to supply inadvertently omitted material
 to applications filed on or after September 21, 2004.
 

 B. Material Must Be Inadvertently Omitted There is no requirement for applicant to submit a
 declaration stating that the omission was inadvertent or to submit proof that a
 particular omission was inadvertent at the time of filing of the application. If
 applicant submits an amendment to add the omitted material pursuant to
 37 CFR
 1.57(b) , it would constitute a certification under
 37 CFR
 11.18(b) that the omission was inadvertent. The Office,
 however, may inquire as to inadvertence where the record raises such issue.
 

 C. Claim Under 37 CFR 1.55 or 1.78 Present on Filing Date The priority claim under 37 CFR 1.55 
 or the benefit claim under 37 CFR 1.78 of the prior-filed
 application must be present on the filing date of the later-filed application in
 order for it to be considered an incorporation by reference of the prior-filed
 application under 37 CFR 1.57(b) . The later-filed
 application claiming benefit of the prior-filed application can be a continuation,
 divisional, or continuation-in-part application of the prior-filed application.
 

 D. Omitted Material Completely Contained in Prior-filed
 Application The phrase “completely contained” in 37 CFR
 1.57(b) requires that the material to be added to the
 later-filed application under 37 CFR 1.57(b) must be expressly,
 as opposed to implicitly, disclosed in the prior-filed application. Furthermore, the
 material to be added must be completely contained in the prior-filed application
 as filed since it is the prior application as filed which is being
 incorporated under 37 CFR 1.57(b) .
 

 E. Amendment to Add Inadvertently Omitted Material The application must be amended to include the
 inadvertently omitted portion of the specification or drawing(s) within any time
 period set by the Office, but in no case later than the close of prosecution as
 defined in 37 CFR
 1.114(b) , or the abandonment of the application, whichever
 occurs earlier. If the Office of Patent Application Processing (OPAP) mails a “Notice
 of Omitted Item(s)” indicating that a portion of the specification or drawings have
 been omitted, any amendment pursuant to 37 CFR 1.57(b) should be
 submitted within the two month time period set in the notice and should be identified
 as an amendment under 37 CFR 1.57(b) . The amendment
 must be in compliance with 37 CFR 1.57(b) and
 1.121 . See MPEP § 601.01(d) and §
 601.01(g) . While an amendment to include inadvertently
 omitted material may be submitted in reply to a final Office action which first
 raises the issue of the omitted material, such an amendment does not have a right of
 entry as it would be considered as an amendment under 37 CFR 1.116 .
 If the application is abandoned or the prosecution is closed, applicant may file a
 petition to revive an application under 37 CFR 1.137 and/or a request for
 continued examination under 37 CFR 1.114 , as appropriate, in
 order to restore the application to pending status and/or reopen prosecution in the
 application. If, however, an application has been patented, a certificate of
 correction or a reissue application could not be used to add inadvertently omitted
 material to that patent via 37 CFR 1.57(b) .
 

 In order for the omitted material to be included in the
 application, and hence considered to be part of the disclosure, the application must
 be amended to include the omitted portion. Therefore, applicants can still
 intentionally omit material contained in the prior-filed application from the
 application containing the priority or benefit claim without the material coming back
 in by virtue of the incorporation by reference of 37 CFR
 1.57(b) . Applicants can maintain their intent by simply not
 amending the application to include the intentionally omitted material.
 

 In addition to filing the amendment to add the
 inadvertently omitted material, applicant is also required to: (A) supply a copy of
 the prior-filed application, except where the prior-filed application is an
 application filed under 35 U.S.C. 111 ; (B) supply an
 English-language translation of any prior-filed application that is in a language
 other than English; and (C) identify where the inadvertently omitted portion of the
 specification or drawings can be found in the prior-filed application.
 

 F. Petition Requirement If an application is not otherwise entitled to a filing
 date under 37
 CFR 1.53(b) , the amendment must be by way of petition under
 37 CFR
 1.53(e) accompanied by the fee set forth in 37 CFR
 1.17(f) . If OPAP mails a “Notice of Incomplete Application”
 indicating that the application lacks a specification or drawings, applicant should
 file a petition under 37 CFR 1.57(b) in response to the
 notice if applicant wants to rely on 37 CFR 1.57(b) . See
 MPEP §
 601.01(d) and § 601.01(f) .
 

 G. International Applications Any amendment to an international application pursuant
 to 37 CFR
 1.57(b)(1) will be effective only as to the United States and
 shall have no effect on the international filing date of the application. The
 incorporation by reference relief provided in 37 CFR
 1.57(b) cannot be relied upon to accord an international filing
 date to an international application that is not otherwise entitled to a filing date
 under PCT Article
 11 , and it cannot be relied upon to alter the international
 filing date accorded under PCT Article 11 . In addition, no
 request to add the inadvertently omitted portion of the specification or drawings in
 an international application designating the United States will be acted upon by the
 Office prior to the entry and commencement of the national stage ( 37 CFR
 1.491 ) or the filing of an application under 35 U.S.C.
 111(a) which claims benefit of the international
 application.
 

 H. International Design Applications Any amendment to an international design application
 pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States
 and shall have no effect on the filing date of the application. In addition, no request
 to add the inadvertently omitted portion of the specification or drawings in an
 international design application will be acted upon by the Office prior to the
 international design application becoming a nonprovisional application.
 

 III. EXAMPLES Example 1: The Office of Patent Application Processing (OPAP)
 noticed that Figure 3 was omitted from the application during the initial review of
 the application although the specification included a description of Figure 3. The
 application as originally filed contained a claim under 37 CFR 1.78 
 for the benefit of a prior-filed application that included the appropriate Figure 3.
 OPAP mailed a Notice of Omitted Item(s) notifying the applicant of the omission of
 Figure 3 and providing a two-month period for reply.
 

 Applicant may rely on the incorporation by reference
 provided by 37 CFR 1.57(b) to amend the
 application to add Figure 3. Applicant, however, must file the amendment to add the
 inadvertently omitted drawing figure in compliance with 37 CFR
 1.57(b) within the time period set forth in the Notice of
 Omitted Item(s).
 

 

 Example 2: Applicant discovered that the last page of the
 specification is inadvertently omitted after the prosecution of the application has
 been closed (e.g., a final Office action, an Ex Parte Quayle 
 action, or a notice of allowance has been mailed to the applicant). The application,
 as originally filed, contained a claim under 37 CFR 1.78 for the benefit of a
 prior-filed application that included the last page of the specification.
 

 If applicant wishes to amend the specification to
 include the inadvertently omitted material, applicant must reopen the prosecution by
 filing a Request for Continued Examination (RCE) under 37 CFR 1.114 
 accompanied by the appropriate fee and an amendment in compliance with
 37 CFR
 1.57(b) within the time period for reply set forth in the last
 Office action (e.g., prior to payment of the issue fee, unless applicant also files a
 petition to withdraw the application from issue).
 

 

 Example 3: Applicant filed a (third) application that includes a
 claim under 37
 CFR 1.78 for the benefit of a (second) prior-filed application
 and a (first) prior-filed application. The second application was a continuation
 application of the first application and the second application was abandoned after
 the filing of the third application. Subsequently, the applicant discovered the last
 page of the specification was inadvertently omitted from the third application and
 the second application.
 

 If the benefit of the filing date of first application
 for the omitted subject matter is required (for example, the omitted material is
 required to provide support for the claimed subject matter of the third application
 and there is an intervening reference that has a prior art date prior to the filing
 date of the third application, but after the filing date of the first application),
 applicant must amend the specification of the second application and the
 specification of the third application to include the inadvertently omitted material
 in compliance with 37 CFR 1.57(b) (note: the second
 and third applications must be filed on or after September 21, 2004. Since the second
 application is abandoned, applicant must file a petition to revive under
 37 CFR
 1.137 in the second application only for the purpose of
 correcting the specification under 37 CFR 1.57(b) along with the
 amendment in compliance with 37 CFR 1.57(b) .
 

 
 IV. FORM PARAGRAPHS Examiners may use form paragraph
 6.19.02 
 set forth below to notify applicant that an amendment to add inadvertently omitted
 material pursuant to 37 CFR 1.57(b) is not in compliance
 with 37 CFR
 1.57(b) . If the amendment is made to the specification and/or
 drawings and introduces new matter into the disclosure, form paragraph
 7.28 must
 also be used to object to the new matter added to the disclosure, and if the amendment
 adds new matter to the claims or affects the claims, form paragraph
 7.31.01 
 must also be used to reject the claims under 35 U.S.C.
 112(a) .
 

 ¶ 6.19.02 Amendment Not in Compliance with 37 CFR 1.57(b)

 The amendment to add inadvertently omitted material pursuant to
 37 CFR
 1.57(b) filed [1] is not in compliance with
 37 CFR
 1.57(b) because [2] .
 

 Examiner Note:
 
 1. In bracket 1, insert the date the amendment was filed.

 2. In bracket 2, insert the reason why the amendment has not been
 entered. For example: (1) the present application was filed before September 21, 2004,
 the effective date of the provisions now in 37 CFR 1.57(b) (the provisions were
 formerly in 37 CFR 1.57(a)); (2) the claim for priority/benefit of the prior-filed
 application was not present on the filing date of the present application; (3) the
 inadvertently omitted portion is not completely contained in the prior-filed
 application; (4) a copy of the prior-filed application (except where the prior-filed
 application is an application filed under 35 U.S.C. 111 ) was not submitted;
 (5) an English language translation of the prior-filed non-English language application
 was not submitted; or (6) applicant did not identify where the inadvertently omitted
 portion of the specification or drawings can be found in the prior-filed
 application.
 

 3. This form paragraph must be followed by form paragraph
 7.28 , where
 the amendment is made to the specification and/or drawings and introduces new matter
 into the disclosure, and/or form paragraph 7.31.01 , where the amendment adds new matter to the
 claims or affects the claims. 
 

 4. If the amendment is an after-final amendment, an advisory action
 should be issued indicating that the amendment raises new issues because it is not in
 compliance with 37 CFR
 1.57(b) .
 

 5. This form paragraph should not be used if
 there is an express incorporation by reference since applicant would not need to comply
 with the requirements of 37 CFR 1.57(b) .
 
 
 

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 201-Types of Applications 
 201.01-National Applications 

 201.02-General Terms Used to Describe Applications 

 201.03-[Reserved] 

 201.04-Provisional Application 

 201.05-Reissue Application 

 201.06-Divisional 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 

 
 

 202-Cross-Noting 

 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-[Reserved] 

 203.08-Status Inquiries 
 203.08(a)-Congressional and Other Official Inquiries 

 
 

 
 

 204‑209-[Reserved] 

 210-Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application 

 211-Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) 
 211.01-Requirements Related to the Prior-Filed Application 
 211.01(a)-Claiming the Benefit of a Provisional Application 

 211.01(b)-Claiming the Benefit of a Nonprovisional Application 

 211.01(c)-Claiming the Benefit of an International Application Designating the United States 

 211.01(d)-Claiming the Benefit of an International Design Application Designating the United States 

 
 

 211.02-Reference to Prior Application(s) 
 211.02(a)-Correcting or Adding a Benefit Claim After Filing 

 
 

 211.03-Time Period for Making a Claim for Benefit Under 37 CFR 1.78 

 211.04-Delayed Benefit Claims 

 211.05-Sufficiency of Disclosure in Prior-Filed Application 

 
 

 212-[Reserved] 

 213-Right of Priority of Foreign Application 
 213.01-Recognized Countries and Regional Patent Offices of Foreign Filing 

 213.02-Formal Requirements Relating to Foreign Priority Application 

 213.03-Time for Filing U.S. Nonprovisional Application 

 213.04-Requirement to File Priority Claim and Certified Copy During Pendency of Application 

 213.05-Right of Priority Based Upon an Application for an Inventor’s Certificate 

 213.06-Claiming Priority and Filing a Certified Copy in a National Stage Application (35 U.S.C. 371) 

 213.07-Claiming Priority and Filing a Certified Copy in a Nonprovisional International Design Application 

 
 

 214-Formal Requirements of Claim for Foreign Priority 
 214.01-Time for Filing Priority Claim 

 214.02-Unintentionally Delayed Priority Claims 

 214.03-Office Acknowledgement of Priority Claims 

 214.04-Proper Identification of Priority Application in Foreign Priority Claim 

 
 

 215-Certified Copy of Foreign Application 
 215.01-Electronic Priority Document Exchange 

 215.02-Time For Filing Certified Copy – Application Filed On or After March 16, 2013 
 215.02(a)-Timeliness Requirement – Met By Priority Document Exchange 

 215.02(b)-Timeliness Requirement – Met By Interim Copy of Foreign Application 

 
 

 215.03-Time For Filing Certified Copy – Application Filed Before March 16, 2013 

 
 

 216-Entitlement to Priority 
 216.01-Perfecting Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f) After Issuance of a Patent 

 
 

 217-Incorporation by Reference Under 37 CFR 1.57(b) 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:33