MPEP § 601 — MPEP § 601
Current through: 2022-07-01

601-Content of Provisional and Nonprovisional Applications 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0600 

 Section 601 
 

 
 
 
 
 
 601 Content of Provisional and Nonprovisional Applications [R-07.2022]

 
 35 U.S.C. 111 
 Application. 

 [Editor Note: Applicable to any patent application filed under this provision
 on or after December 18, 2013. See pre-PLT (AIA) 35 U.S.C. 111 or
 pre-AIA 35
 U.S.C. 111 for the law otherwise applicable.] 

 
 (a) IN GENERAL.—
 
 (1) WRITTEN APPLICATION.—An application for patent shall be
 made, or authorized to be made, by the inventor, except as otherwise
 provided in this title, in writing to the Director.
 

 (2) CONTENTS.—Such application shall include—
 
 (A) a specification as prescribed by section
 112 ;
 

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

 (C) an oath or declaration as prescribed by
 section 115 .
 

 
 

 (3) FEE, OATH OR DECLARATION, AND CLAIMS.—The application shall
 be accompanied by the fee required by law. The fee, oath or declaration, and
 1 or more claims may be submitted after the filing date of the application,
 within such period and under such conditions, including the payment of a
 surcharge, as may be prescribed by the Director. Upon failure to submit the
 fee, oath or declaration, and 1 or more claims within such prescribed
 period, the application shall be regarded as abandoned.
 

 (4) FILING DATE.—The filing date of an application shall be the
 date on which a specification, with or without claims, is received in the
 United States 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 otherwise provided
 in this title, in writing to the Director. Such application shall
 include—
 
 (A) a specification as prescribed by section
 112(a) ; and
 

 (B) a drawing as prescribed by section
 113 .
 

 
 

 (2) CLAIM.—A claim, as required by subsections (b) through (e)
 of section
 112 , shall not be required in a provisional
 application.
 

 (3) FEE.—The application shall be accompanied by the fee
 required by law. The fee may be submitted after the filing date of the
 application, within such period and under such conditions, including the
 payment of a surcharge, as may be prescribed by the Director. Upon failure
 to submit the fee within such prescribed period, the application shall be
 regarded as abandoned.
 

 (4) FILING DATE.—The filing date of a provisional application
 shall be the date on which a specification, with or without claims, is
 received in the United States 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) , 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 Director, 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 ,
 365(a) , or 386(a) or to the benefit of an earlier filing date in
 the United States under section 120 ,
 121 , 365(c) , or
 386(c) .
 

 (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
 applications for patent shall not be subject to sections
 131 and 135 .
 

 
 

 (c) PRIOR FILED APPLICATION.—Notwithstanding the
 provisions of subsection (a), the Director may prescribe the conditions, including
 the payment of a surcharge, under which a reference made upon the filing of an
 application under subsection (a) to a previously filed application, specifying the
 previously filed application by application number and the intellectual property
 authority or country in which the application was filed, shall constitute the
 specification and any drawings of the subsequent application for purposes of a
 filing date. A copy of the specification and any drawings of the previously filed
 application shall be submitted within such period and under such conditions as may
 be prescribed by the Director. A failure to submit the copy of the specification
 and any drawings of the previously filed application within the prescribed period
 shall result in the application being regarded as abandoned. Such application
 shall be treated as having never been filed, unless— 
 
 (1) the application is revived under
 section 27 ; and
 

 (2) a copy of the specification and any drawings
 of the previously filed application are submitted to the Director.
 

 
 

 
 

 
 35 U.S.C. 111 (pre-PLT (AIA)) 
 Application. 

 [Editor Note: Applicable to any patent application filed on or after September
 16, 2012, and before December 18, 2013. See 35 U.S.C. 111 or
 pre-AIA 35
 U.S.C. 111 for the law otherwise applicable.] 

 
 (a) IN GENERAL.—
 
 (1) WRITTEN APPLICATION.—An application for patent
 shall be made, or authorized to be made, by the inventor, except as
 otherwise provided in this title, in writing to the Director.
 

 (2) CONTENTS.—Such application shall include—
 
 (A) a specification as prescribed by
 section 112 ;
 

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

 (C) an oath or declaration as prescribed by
 section 115 .
 

 
 

 (3) FEE AND OATH OR DECLARATION.—The application must
 be accompanied by the fee required by law. The fee and oath or declaration
 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 Director.
 

 (4) FAILURE TO SUBMIT.—Upon failure to submit the fee
 and oath or declaration within such prescribed period, the application shall
 be regarded as abandoned, unless it is shown to the satisfaction of the
 Director that the delay in submitting the fee and oath or declaration was
 unavoidable or unintentional. 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 otherwise
 provided in this title, in writing to the Director. Such application shall
 include—
 
 (A) a specification as prescribed by
 section 112(a) ;
 and
 

 (B) a drawing as prescribed by section
 113 .
 

 
 

 (2) CLAIM.—A claim, as required by subsections (b)
 through (e) of section 112 , shall not
 be required in a provisional application.
 

 (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 conditions, including the payment of a
 surcharge, as may be prescribed by the Director.
 

 (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 Director 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) , 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
 Director, 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) or to the benefit of an earlier filing date in
 the United States under section 120 ,
 121 , or 365(c) .
 

 (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
 applications for patent shall not be subject to sections
 131 and 135 .
 

 
 

 
 

 Pre-AIA 35 U.S.C.
 111 requirements substantially correspond to those of
 pre-PLT (AIA) 35
 U.S.C. 111 , but do not include conforming amendments with regard to
 the oath or declaration provisions and other miscellaneous provisions of the AIA.
 

 
 37 CFR 1.51 General requisites of an application. 

 
 (a) Applications for patents must be made to the Director of the
 United States Patent and Trademark Office. An application transmittal letter
 limited to the transmittal of the documents and fees comprising a patent
 application under this section may be signed by a juristic applicant or patent
 owner.
 

 (b) A complete application filed under § 1.53(b) or
 §
 1.53(d) comprises:
 
 (1) A specification as prescribed by 35 U.S.C.
 112 , including a claim or claims, see
 §§
 1.71 to 1.77 ;
 

 (2) The inventor’s oath or declaration, see §§
 1.63 and 1.64 ;
 

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

 (4) The prescribed filing fee, search fee, examination fee, and
 application size fee, see § 1.16 .
 

 
 

 (c) A complete provisional application filed under § 1.53(c) 
 comprises:
 
 (1) A cover sheet identifying:
 
 (i) The application as a provisional application,

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

 (iii) The residence of each named inventor,

 (iv) The title of the invention,

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

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

 (vii) The correspondence address, and

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

 
 

 (2) A specification as prescribed by 35 U.S.C.
 112(a) , see § 1.71 ;
 

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

 (4) The prescribed filing fee and application size fee, see
 §
 1.16 .
 

 
 

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

 
 
 I. GUIDELINES FOR DRAFTING A NONPROVISIONAL PATENT APPLICATION UNDER 35 U.S.C.
 111(a) The following guidelines illustrate the preferred layout and content of
 patent applications filed under 35 U.S.C. 111(a) . These guidelines
 are suggested for the applicant’s use. See also 37 CFR 1.77 and
 MPEP §
 608.01(a) . If an application data sheet ( 37 CFR 1.76 ) is
 used, data supplied in the application data sheet need not be provided elsewhere in the
 application with one exception for applications filed before September 16, 2012. For
 such applications, the citizenship of each inventor must be provided in the oath or
 declaration under pre-AIA 37 CFR 1.63 even if this information is provided in the
 application data sheet (see pre-AIA 37 CFR 1.76(b) ). If there is
 a discrepancy between the information submitted in an application data sheet and the
 information submitted elsewhere in the application, the application data sheet will
 control except for the naming of the inventors which is governed by 37 CFR 1.41 
 and, for applications filed before September 16, 2012, the citizenship of the inventors.
 See MPEP §
 601.05 .
 

 A complete application filed under 35 U.S.C. 111(a) comprises a
 specification, including claims, as prescribed by 35 U.S.C. 112 , drawings as
 prescribed by 35
 U.S.C. 113 , an oath or declaration as prescribed by
 35 U.S.C.
 115 , and the prescribed filing fee, search fee, examination fee
 and application size fee.
 

 Arrangement and Contents of the Specification The following order of arrangement is preferable in framing the
 specification. See also MPEP § 608.01(a) . Each of the lettered items should appear
 in upper case, without underlining or bold type, as section headings.
 

 
 (A) Title of the invention. (See MPEP §
 606 ).
 

 (B) Cross-reference to related applications. (See
 MPEP § 211 et seq. ).
 

 (C) Statement regarding federally sponsored research or
 development. (See MPEP § 310 ).
 

 (D) The names of the parties to a joint research agreement (see
 37 CFR
 1.71(g) ).
 

 (E) An incorporation by reference statement regarding the material
 in: 
 
 (1) One or more ASCII plain text files, submitted via the USPTO patent
 electronic filing system or on one or more read-only optical discs (see
 37 CFR 1.52(e)(8) )
 for the following document types:
 
 (a) A “Computer Program Listing Appendix” (see 37 CFR
 1.96(c));
 

 (b) A “Sequence Listing” (see 37 CFR 1.821(c));
 or
 

 

 (c) “Large Tables” (see 37 CFR 1.58(c)).

 
 

 (2) An XML file for a “Sequence Listing XML” (see 37 CFR
 1.831(a)), submitted via the USPTO patent electronic filing system or on
 one or more read-only optical discs (see 37 CFR 1.52(e)(8)). 
 

 
 

 (F) Statement regarding prior disclosures by an
 inventor or joint inventor.
 

 (G) Background of the invention. (See MPEP §
 608.01(c) ).
 
 (1) Field of the invention.

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

 
 

 (H) Brief summary of the invention. (See MPEP §
 608.01(d) ).
 

 (I) Brief description of the several views of the drawing. (See
 MPEP §
 608.01(f) ).
 

 (J) Detailed description of the invention. (See
 MPEP §
 608.01(g) ).
 

 (K) Claim(s) (commencing on a separate sheet). (See
 MPEP §
 608.01(i)-(p) ).
 

 (L) Abstract of the Disclosure (commencing on a separate sheet).
 (See MPEP §
 608.01(b) ).
 

 (M) “Sequence Listing”, if present and submitted as a PDF image
 file via the USPTO patent electronic filing system or on physical sheets of
 paper (see 37 CFR 1.821(c) (2) and (3)). 
 

 II. GUIDELINES FOR DRAFTING A PROVISIONAL APPLICATION UNDER 35 U.S.C. 111(b) A provisional application should preferably conform to the arrangement
 guidelines for nonprovisional applications. The specification must, however, comply with
 35 U.S.C.
 112(a) and refer to drawings, where necessary for an understanding
 of the invention. Unlike an application filed under 35 U.S.C. 111(a) which requires
 claims before examination, a provisional application does not require claims.
 Furthermore, no oath or declaration is required. See MPEP §
 201.04 .
 

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

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

 This cover sheet information enables the Office to prepare a proper
 filing receipt and provides the Office of Patent Application Processing (OPAP) with most
 of the information needed to process the provisional application. See
 MPEP §
 201.04 for a sample cover sheet.
 

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

 The paper standard requirements for papers submitted as part of the
 record of a patent application is covered in MPEP § 608.01 , subsection I.
 Determination of completeness of an application is covered in MPEP § 506 and
 §
 601.01 et seq. 

 The elements of the application are stored together in an electronic
 file wrapper, bearing appropriate identifying data including the application number and
 filing date ( MPEP §
 719 ).
 

 See also the following the MPEP sections.

 Provisional applications, MPEP §
 201.04 .
 

 Divisional applications, MPEP §
 201.06 .
 

 Continuation applications, MPEP §
 201.06(c) .
 

 Continued prosecution applications, MPEP §
 201.06(d) .
 

 Reissue applications, MPEP § 1401 .
 

 Design applications, MPEP Chapter 1500 .
 

 Plant applications, MPEP Chapter 1600 .
 

 International applications filed under the Patent
 Cooperation Treaty (PCT), MPEP Chapter 1800 .
 

 International Applications, commencement and entry into
 national stage, MPEP §
 1893.01 .
 

 Biotechnology applications, MPEP Chapter
 2400 .
 

 International design applications, MPEP Chapter
 2900 .
 

 Ex Parte Reexamination, MPEP Chapter 2200 .
 

 Inter Partes Reexamination, MPEP Chapter 2600 .
 

 Supplemental Examination, MPEP Chapter
 2800 .
 

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

 Copies of an application will be provided by the USPTO upon request and
 payment of the fee set forth in 37 CFR 1.19(b) unless the
 application has been disposed of (see 37 CFR 1.53(e), (f) and (g) ).
 

 
 601.01 Complete Application [R-07.2022]

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

 [Editor Note: Paragraphs (b), (c), (f) and (h) below have limited
 applicability as follows: 

 
 (1) Paragraph (c)(4) is applicable to all
 applications irrespective of filing date; 

 (2) Paragraphs (b) and (c), are applicable
 only to patent applications filed under 35 U.S.C.
 111(a) on or after December 18, 2013. See
 pre-PLT (AIA) 37 CFR
 1.53 for paragraphs (b) and (c) otherwise in
 effect; 

 (3) Paragraph (f), effective December 18,
 2013, and paragraph (h), effective September 16, 2012, are applicable only
 to patent applications filed under 35 U.S.C. 111(a) on or
 after September 16, 2012. See pre-AIA 37 CFR 1.53 for
 paragraphs (f) and (h) otherwise in effect.] 

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

 (b) Application filing requirements — Nonprovisional
 application. The filing date of an application for patent filed
 under this section, other than an application for a design patent or a
 provisional application under paragraph (c) of this section, is the date on
 which a specification, with or without claims, is received in the Office. The
 filing date of an application for a design patent filed under this section,
 except for a continued prosecution application under paragraph (d) of this
 section, is the date on which the specification as prescribed by
 35
 U.S.C. 112 , including at least one claim, and any
 required drawings are received in the 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 conditions specified in 35 U.S.C. 120 ,
 121 , 365(c) , or
 386(c) and § 1.78 .
 
 (1) A continuation or divisional application
 that names as inventors the same or fewer than all of the inventors named
 in the prior application 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 continuation or divisional application naming an
 inventor not named in the prior application must be filed under this
 paragraph.
 

 
 

 (c) Application filing requirements — Provisional
 application. The filing date of a provisional application is the date on which
 a specification, with or without claims, is received in the Office. No
 amendment, other than to make the provisional application comply with the
 patent statute and all applicable regulations, may be made to the provisional
 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) , which
 may be an application data sheet ( § 1.76 ), 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 section. The grant of such a request
 for conversion will not entitle applicant to a refund of the fees that
 were properly paid in the application filed under paragraph (b) of this
 section. Such a request for conversion must be accompanied by the
 processing fee set forth in §
 1.17(q) and be filed prior to the earliest of:
 
 (i) Abandonment of the application filed
 under paragraph (b) of this section;
 

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

 (iii) Expiration of twelve months after the
 filing date of the application filed under paragraph (b) of this
 section.
 

 
 

 (3) A provisional application filed under
 paragraph (c) of this section may be converted to a nonprovisional
 application filed under paragraph (b) of this section and accorded the
 original filing date of the provisional application. The conversion of a
 provisional application to a nonprovisional application will not result
 in either the refund of any fee properly paid in the provisional
 application or the application of any such fee to the filing fee, or any
 other fee, for the nonprovisional application. Conversion of a
 provisional application to a nonprovisional application under this
 paragraph will result in the term of any patent to issue from the
 application being measured from at least the filing date of the
 provisional application for which conversion is requested. Thus,
 applicants should consider avoiding this adverse patent term impact by
 filing a nonprovisional application claiming the benefit of the
 provisional application under 35 U.S.C. 119(e) ,
 rather than converting the provisional application into a nonprovisional
 application pursuant to this paragraph. A request to convert a
 provisional application to a nonprovisional application must be
 accompanied by the fee set forth in §
 1.17(i) and an amendment including at least one
 claim as prescribed by 35 U.S.C. 112(b) ,
 unless the provisional application under paragraph (c) of this section
 otherwise contains at least one claim as prescribed by 35 U.S.C.
 112(b) . The nonprovisional application resulting
 from conversion of a provisional application must also include the filing
 fee, search fee, and examination fee for a nonprovisional application,
 and the surcharge required by § 1.16(f) if either
 the basic filing fee for a nonprovisional application or the inventor's
 oath or declaration was not present on the filing date accorded the
 resulting nonprovisional application (i.e., the filing date of the
 original provisional application). A request to convert a provisional
 application to a nonprovisional application must also be filed prior to
 the earliest of:
 
 (i) Abandonment of the provisional
 application filed under paragraph (c) of this section; or
 

 (ii) Expiration of twelve months after the
 filing date of the provisional application filed under paragraph
 (c) of this section.
 

 
 

 (4) A provisional application is not entitled
 to the right of priority under 35 U.S.C. 119 ,
 365(a) , or 386(a) or § 1.55 , or to the
 benefit of an earlier filing date under 35 U.S.C.
 120 , 121 ,
 365(c) , or 386(c) or § 1.78 of any other
 application. No claim for priority under 35 U.S.C.
 119(e) or § 1.78(a) may be made
 in a design application based on a provisional application. A provisional
 application disclosing nucleotide and/or amino acid sequences is not
 required to include a separate sequence listing; however, if submitted in
 a provisional application filed on or after July 1, 2022, any submission
 of nucleotide and/or amino acid sequence data must be by way of a
 “Sequence Listing XML” in compliance with §§ 1.831 through 1.834 .
 

 
 

 (d) Application filing requirements — Continued prosecution
 (nonprovisional) application. 
 (1) A continuation or divisional application
 (but not a continuation-in-part) of a prior nonprovisional application
 may be filed as a continued prosecution application under this paragraph,
 provided that:
 
 (i) The application is for a design
 patent;
 

 (ii) The prior nonprovisional application
 is a design application, but not an international design
 application, that is complete as defined by §
 1.51(b) except for the inventor’s oath or
 declaration if the application is filed on or after September 16,
 2012, and the prior nonprovisional application contains an
 application data sheet meeting the conditions specified in
 §
 1.53(f)(3)(i) ; and
 

 (iii) 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(c) 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 paragraph, will utilize the file jacket and
 contents of the prior application, including the specification,
 drawings and the inventor's 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, search fee, and examination
 fee for a continued prosecution application filed under this paragraph
 are the basic filing fee as set forth in §
 1.16(b) , the search fee as set forth in
 §
 1.16(l) , and the examination fee as set forth in
 §
 1.16(p) .
 

 (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 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. 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 correction of
 inventorship 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 paragraph (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 public,
 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 similar access
 to, copies of, or similar information concerning the other application or
 applications in the file jacket.
 

 (7) A request for an application under this
 paragraph is the specific 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 application to the best of his or her ability:
 
 (i) Title of invention;

 (ii) Name of applicant(s); and

 (iii) Correspondence address.

 
 

 (9) See § 1.103(b) for
 requesting a limited suspension of action in an application filed under
 this paragraph.
 

 
 

 (e) Failure to meet filing date requirements.
 
 (1) If an application deposited under paragraph
 (b), (c), or (d) of this section does not meet the requirements of such
 paragraph to be entitled to a filing date, applicant will be so notified,
 if a correspondence address has been provided, and given a period of time
 within which to correct the filing error. If, however, a request for an
 application under paragraph (d) of this section does not meet the
 requirements of that paragraph because the application in which the
 request was filed is not a design application, and if the application in
 which the request was filed was itself filed on or after June 8, 1995,
 the request for an application under paragraph (d) of this section will
 be treated as a request for continued examination under §
 1.114 .
 

 (2) Any request for review of a notification
 pursuant to paragraph (e)(1) of this section, or a notification that the
 original application papers lack a portion of the specification or
 drawing(s), must be by way of a petition pursuant to this paragraph
 accompanied by the fee set forth in §
 1.17(f) . In the absence of a timely
 ( §
 1.181(f) ) petition pursuant to this paragraph, the
 filing date of an application in which the applicant was notified of a
 filing error pursuant to paragraph (e)(1) of this section will be the
 date the filing error is corrected.
 

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

 
 

 (f) Completion of application subsequent to filing — Nonprovisional
 (including continued prosecution or reissue) application. 
 (1) If an application which has been accorded a
 filing date pursuant to paragraph (b) or (d) of this section does not
 include the basic filing fee, search fee, or examination fee, or if an
 application which has been accorded a filing date pursuant to paragraph
 (b) of this section does not include at least one claim or the inventor's
 oath or declaration ( §§ 1.63 ,
 1.64 , 1.162 or
 1.175 ), and the applicant has provided a
 correspondence address ( § 1.33(a) ), the
 applicant will be notified and given a period of time within which to
 file a claim or claims, pay the basic filing fee, search fee, and
 examination fee, and pay the surcharge if required by §
 1.16(f) to avoid abandonment.
 

 (2) If an application which has been accorded a
 filing date pursuant to paragraph (b) of this section does not include
 the basic filing fee, search fee, examination fee, at least one claim, or
 the inventor's oath or declaration, and the applicant has not provided a
 correspondence address (§ 1.33(a)), the applicant has three months from
 the filing date of the application within which to file a claim or
 claims, pay the basic filing fee, search fee, and examination fee, and
 pay the surcharge required by § 1.16(f) to avoid
 abandonment.
 

 (3) The inventor's oath or declaration in an
 application under § 1.53(b) must also
 be filed within the period specified in paragraph (f)(1) or (f)(2) of
 this section, except that the filing of the inventor's oath or
 declaration may be postponed until the application is otherwise in
 condition for allowance under the conditions specified in paragraphs
 (f)(3)(i) and (f)(3)(ii) of this section.
 
 (i) The application must be an original
 (non-reissue) application that contains an application data sheet
 in accordance with § 1.76 
 identifying:
 
 (A) Each inventor by his or her
 legal name;
 

 (B) A mailing address where the
 inventor customarily receives mail, and residence, if an
 inventor lives at a location which is different from where
 the inventor customarily receives mail, for each
 inventor.
 

 
 

 (ii) The applicant must file each required
 oath or declaration in compliance with §
 1.63 , or substitute statement in compliance
 with § 1.64 , no
 later than the date on which the issue fee for the patent is paid.
 If the applicant is notified in a notice of allowability that an
 oath or declaration in compliance with §
 1.63 , or substitute statement in compliance
 with § 1.64 ,
 executed by or with respect to each named inventor has not been
 filed, the applicant must file each required oath or declaration in
 compliance with § 1.63 , or
 substitute statement in compliance with §
 1.64 , no later than the date on which the
 issue fee is paid to avoid abandonment. This time period is not
 extendable under § 1.136 (see
 § 1.136(c) ).
 The Office may dispense with the notice provided for in paragraph
 (f)(1) of this section if each required oath or declaration in
 compliance with § 1.63 , or
 substitute statement in compliance with §
 1.64 , has been filed before the application
 is in condition for allowance.
 

 
 

 (4) If the excess claims fees required by
 §
 1.16(h) and (i) and multiple dependent claim fee
 required by § 1.16(j) are not
 paid on filing or on later presentation of the claims for which the
 excess claims or multiple dependent claim fees are due, the fees required
 by §
 1.16(h), (i), and (j) must be paid or the claims
 canceled by amendment prior to the expiration of the time period set for
 reply by the Office in any notice of fee deficiency. If the application
 size fee required by § 1.16(s) (if any) is
 not paid on filing or on later presentation of the amendment
 necessitating a fee or additional fee under §
 1.16(s) , the fee required by §
 1.16(s) must be paid prior to the expiration of the
 time period set for reply by the Office in any notice of fee deficiency
 in order to avoid abandonment.
 

 (5) This paragraph applies to continuation or
 divisional applications under paragraphs (b) or (d) of this section and
 to continuation-in-part applications under paragraph (b) of this section.
 See § 1.63(d) concerning the submission of a copy of
 the inventor's oath or declaration from the prior application for a
 continuing application under paragraph (b) of this section.
 

 (6) If applicant does not pay the basic filing
 fee during the pendency of the application, the Office may dispose of the
 application.
 

 
 

 (g) Completion of application subsequent to filing — Provisional
 application. 
 (1) If a provisional application which has been
 accorded a filing date pursuant to paragraph (c) of this section does not
 include the cover sheet required by § 1.51(c)(1) or the
 basic filing fee ( § 1.16(d) ), and
 applicant has provided a correspondence address ( §
 1.33(a) ), applicant will be notified and given a
 period of time within which to pay the basic filing fee, file a cover
 sheet ( § 1.51(c)(1) ), and pay the surcharge required by
 §
 1.16(g) to avoid abandonment.
 

 (2) If a provisional application which has been
 accorded a filing date pursuant to paragraph (c) of this section does not
 include the cover sheet required by § 1.51(c)(1) or the
 basic filing fee ( § 1.16(d) ), and
 applicant has not provided a correspondence address ( §
 1.33(a) ), applicant has two months from the filing
 date of the application within which to pay the basic filing fee, file a
 cover sheet ( § 1.51(c)(1) ), and
 pay the surcharge required by § 1.16(g) to avoid
 abandonment.
 

 (3) If the application size fee required by
 §
 1.16(s) (if any) is not paid on filing, the fee
 required by § 1.16(s) must be
 paid prior to the expiration of the time period set for reply by the
 Office in any notice of fee deficiency in order to avoid abandonment.
 

 (4) If applicant does not pay the basic filing
 fee during the pendency of the application, the Office may dispose of the
 application.
 

 
 

 (h) Subsequent treatment of application — Nonprovisional (including
 continued prosecution) application. An application for a patent
 filed under paragraphs (b) or (d) of this section will not be placed on the
 files for examination until all its required parts, complying with the rules
 relating thereto, are received, except that the inventor's oath or declaration
 may be filed when the application is otherwise in condition for allowance
 pursuant to paragraph (f)(3) of this section and minor informalities may be
 waived subject to subsequent correction whenever required.
 

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

 
 

 
 37 CFR 1.53 pre-PLT (AIA) Application number, filing date, and completion of application. 

 [Editor Note: Paragraphs (b) and (c)(1) to (3) are applicable to patent
 applications filed under 35 U.S.C. 111 before December
 18, 2013. For the text of paragraphs (a), (c)(4), (d), (e), (g), and (i)
 applicable to patent applications filed under 35 U.S.C.
 111 before December 18, 2013, see 37 CFR
 1.53 . For the text of paragraphs (f) and (h), see
 37 CFR
 1.53 for applications filed under 35 U.S.C.
 111 on or after September 16, 2012 and see pre-AIA 37 CFR
 1.53 for applications filed before September 16,
 2012.] 

 *****

 
 (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 continued 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 Trademark 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 conditions specified in 35 U.S.C. 120 ,
 121 or 365(c) and
 §
 1.78(c) and (d) .
 
 (1) A continuation or divisional application that names as
 inventors the same or fewer than all of the inventors named in the prior
 application 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
 continuation or divisional application naming an inventor not named in
 the prior application must be filed under this paragraph.
 

 
 

 (c) Application filing requirements - Provisional application. 
 The filing date of a provisional application is the date on which a
 specification as prescribed by 35 U.S.C. 112(a) , 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 provisional 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) , which
 may be an application data sheet ( § 1.76 ), 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 section. The grant of such a request for conversion
 will not entitle applicant to a refund of the fees that were properly
 paid in the application filed under paragraph (b) of this section. Such a
 request for conversion must be accompanied by the processing fee set
 forth in § 1.17(q) and be
 filed prior to the earliest of:
 
 (i) Abandonment of the application filed under
 paragraph (b) of this section;
 

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

 (iii) Expiration of twelve months after the filing date
 of the application filed under paragraph (b) of this section.
 

 
 

 (3) A provisional application filed under paragraph (c) of
 this section may be converted to a nonprovisional application filed under
 paragraph (b) of this section and accorded the original filing date of
 the provisional application. The conversion of a provisional application
 to a nonprovisional application will not result in either the refund of
 any fee properly paid in the provisional application or the application
 of any such fee to the filing fee, or any other fee, for the
 nonprovisional application. Conversion of a provisional application to a
 nonprovisional application under this paragraph will result in the term
 of any patent to issue from the application being measured from at least
 the filing date of the provisional application for which conversion is
 requested. Thus, applicants should consider avoiding this adverse patent
 term impact by filing a nonprovisional application claiming the benefit
 of the provisional application under 35 U.S.C. 119(e) 
 (rather than converting the provisional application into a nonprovisional
 application pursuant to this paragraph). A request to convert a
 provisional application to a nonprovisional application must be
 accompanied by the fee set forth in § 1.17(i) and an amendment including at least one
 claim as prescribed by 35 U.S.C. 112(b) ,
 unless the provisional application under paragraph (c) of this section
 otherwise contains at least one claim as prescribed by 35 U.S.C.
 112(b) . The nonprovisional application resulting
 from conversion of a provisional application must also include the filing
 fee, search fee, and examination fee for a nonprovisional application,
 the inventor's oath or declaration, and the surcharge required by
 §
 1.16(f) if either the basic filing fee for a
 nonprovisional application or the inventor's oath or declaration was not
 present on the filing date accorded the resulting nonprovisional
 application ( i.e., the filing date of the original
 provisional application). A request to convert a provisional application
 to a nonprovisional application must also be filed prior to the earliest
 of:
 
 (i) Abandonment of the provisional application filed
 under paragraph (c) of this section; or
 

 (ii) Expiration of twelve months after the filing date
 of the provisional application filed under paragraph (c) of this
 section.
 

 
 

 *****

 
 

 
 *****

 

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

 [Editor Note: Applicable to patent applications filed under
 pre-AIA 35
 U.S.C. 111 before September 16, 2012. For the text of
 paragraphs (a), (c)(4), (d), (e), (g), and (i) applicable to patent applications
 filed under 35 U.S.C. 111 before September
 16, 2012, see 37 CFR 1.53 . For the text of
 paragraphs (b) and (c)(1) to (3) applicable to patent applications filed under
 35
 U.S.C. 111 before September 16, 2012, see pre-PLT (AIA) 37 CFR
 1.53 .] 

 *****

 
 (f) Completion of application subsequent to filing—Nonprovisional
 (including continued prosecution or reissue) application. 

 
 
 (1) If an application which has been accorded a filing
 date pursuant to paragraph (b) or (d) of this section does not include the
 basic filing fee, the search fee, or the examination fee, or if an application
 which has been accorded a filing date pursuant to paragraph (b) of this section
 does not include an oath or declaration by the applicant pursuant to
 §§
 1.63 , 1.162 or §
 1.175 , and applicant has provided a correspondence
 address ( §
 1.33(a) ), applicant will be notified and given a period
 of time within which to pay the basic filing fee, search fee, and examination
 fee, file an oath or declaration in an application under paragraph (b) of this
 section, and pay the surcharge if required by § 1.16(f) 
 to avoid abandonment.
 

 (2) If an application which has been accorded a
 filing date pursuant to paragraph (b) of this section does not include the
 basic filing fee, the search fee, the examination fee, or an oath or
 declaration by the applicant pursuant to §§
 1.63 , 1.162 or §
 1.175 , and applicant has not provided a correspondence
 address ( §
 1.33(a) ), applicant has two months from the filing date
 of the application within which to pay the basic filing fee, search fee, and
 examination fee, file an oath or declaration, and pay the surcharge required by
 §
 1.16(f) to avoid abandonment.
 

 (3) If the excess claims fees required by
 §§ 1.16(h)
 and (i) and multiple dependent claim fee required by
 §
 1.16(j) are not paid on filing or on later presentation
 of the claims for which the excess claims or multiple dependent claim fees are
 due, the fees required by §§ 1.16(h), (i) and (j) 
 must be paid or the claims canceled by amendment prior to the expiration of the
 time period set for reply by the Office in any notice of fee deficiency. If the
 application size fee required by § 1.16(s) (if any) is not
 paid on filing or on later presentation of the amendment necessitating a fee or
 additional fee under § 1.16(s) , the fee required
 by §
 1.16(s) must be paid prior to the expiration of the time
 period set for reply by the Office in any notice of fee deficiency in order to
 avoid abandonment.
 

 (4) This paragraph applies to continuation or
 divisional applications under paragraphs (b) or (d) of this section and to
 continuation-in-part applications under paragraph (b) of this section. See
 §
 1.63(d) concerning the submission of a copy of the oath
 or declaration from the prior application for a continuation or divisional
 application under paragraph (b) of this section.
 

 (5) If applicant does not pay the basic filing fee
 during the pendency of the application, the Office may dispose of the
 application.
 

 
 *****

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

 
 *****

 

 37 CFR
 1.53 relates to application numbers, filing dates, and completion
 of applications. Note that the substantive requirements under 37 CFR 1.53 
 for applications filed on or after September 16, 2012 as compared to those filed prior
 to September 16, 2012 (pre-AIA) are the same with the exception of 37 CFR
 1.53(f) , pertaining to completion of a nonprovisional application
 subsequent to filing. Also, note that the filing date requirements under
 37 CFR 1.53(b)
 and (c) for applications filed on or after December 18, 2013 are
 different from those filed prior to December 18, 2013. For example, under
 37 CFR
 1.53(b) , except for design applications, nonprovisional
 applications filed on or after December 18, 2013 may receive a filing date even if the
 application is filed without claims or drawings. See MPEP § 601.01(a) for
 additional information. Similarly, provisional applications filed on or after December
 18, 2013 may receive a filing date even if the application is filed without drawings.
 See MPEP §
 601.01(b) for additional information. If the subject matter of
 a nonprovisional application admits of illustration by a drawing to facilitate
 understanding of the invention, including where a drawing is necessary for the
 understanding of the invention, the Office will continue the practice of requiring a
 drawing. See MPEP §
 608.02 (item IV). Any claim or any drawing submitted after the
 filing date of an application may not contain new matter. 37 CFR 1.53(a) 
 indicates that an application number is assigned for identification purposes to any
 paper which purports to be an application for a patent, even if the application is
 incomplete or informal. The remaining sections of 37 CFR 1.53 treat nonprovisional
 applications filed under 35 U.S.C. 111(a) separately from
 provisional applications filed under 35 U.S.C. 111(b) .
 

 37 CFR
 1.53(d) sets forth the filing date requirements for a continued
 prosecution application (CPA). A CPA is a nonprovisional application which must be filed
 on or after December 1, 1997. Only a continuation or divisional application (but not a
 continuation-in-part) may be filed as a CPA. See MPEP §
 201.06(d) . CPA practice under 37 CFR 1.53(d) 
 does not apply to utility and plant applications. CPAs can only be filed in design
 applications filed under 35 U.S.C. 111(a) .
 

 
 601.01(a) Nonprovisional Applications Filed Under 35 U.S.C.
 111(a) [R-07.2022]
 
 I. APPLICATION FILING REQUIREMENTS The procedure for filing a nonprovisional application under
 35 U.S.C.
 111(a) is set forth in 37 CFR
 1.53(b) and 37 CFR 1.53(d) .
 37 CFR
 1.53(b) may be used to file any original, reissue, or
 substitute nonprovisional application and any continuing application, i.e.,
 continuation, divisional, or continuation-in-part.
 

 Except for design applications, the filing date for
 applications filed under 35 U.S.C. 111 on or after
 December 18, 2013 is the date on which a specification, with or without claims, is
 received in the Office. The filing date for a design application, except for a
 continued prosecution application (CPA) under 37 CFR
 1.53(d) , is the date on which the specification as required
 by 35 U.S.C.
 112 , including at least one claim, and any required drawings
 are received in the Office. Effective for applications filed on or after December
 18, 2013, 37
 CFR 1.53(b) was amended to implement the changes to
 35
 U.S.C. 111(a) and 35 U.S.C. 171 by the Patent
 Law Treaties Implementation Act of 2012 (PLTIA) (Public Law 112-211).
 35
 U.S.C. 111(a) now provides minimal formal requirements
 necessary for an application to be entitled to a filing date to safeguard against
 the loss of a filing date due to a technicality. However, these minimal formal
 requirements should not be viewed as prescribing a best practice for the
 preparation and filing of a patent application. The preparation of claims to any
 claimed invention for which patent protection is desired and the inclusion of such
 claims with the application on filing will help ensure that the application
 satisfies the disclosure requirements of 35 U.S.C.
 112(a) for any such claimed invention.
 

 For applications filed under 35 U.S.C.
 111(a) prior to December 18, 2013, a filing date is assigned
 to a nonprovisional application as of the date a specification containing a
 description and claim and any necessary drawings are filed in the U.S. Patent and
 Trademark Office (Office). See pre-PLT (AIA) 37 CFR
 1.53(b) .
 

 Failure to meet any of the requirements in
 37 CFR
 1.53(b) will result in the application being denied a filing
 date. The filing date to be accorded such an application is the date on which all
 of the requirements of 37 CFR 1.53(b) are met.
 

 37 CFR
 1.53(d) may be used to file either a continuation or a
 divisional application (but not a continuation-in-part) of a design application.
 The prior nonprovisional application must be a design application, but not an
 international design application, that is complete as defined by 37 CFR
 1.51(b) , except for the inventor’s oath or declaration if
 the continued prosecution application (CPA) is filed on or after September 16,
 2012, and the prior nonprovisional application contains an application data sheet
 indicating the name, residence, and mailing address of each inventor. Any
 application filed under 37 CFR 1.53(d) must disclose
 and claim only subject matter disclosed in the prior nonprovisional application
 and must name as inventors the same or less than all of the inventors named in the
 prior nonprovisional application. Under 37 CFR 1.53(d) , the filing
 date assigned is the date on which a request, on a separate paper, for an
 application under 37 CFR 1.53(d) is filed. An
 application filed under 37 CFR 1.53(d) must be filed
 before the earliest of: 
 

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

 (B) abandonment of the prior application; or 

 (C) termination of proceedings on the prior application.

 
 The filing fee, search fee and examination fee for an application
 filed under 37
 CFR 1.53(b) or 37 CFR 1.53(d) and the oath or
 declaration for an application filed under 37 CFR 1.53(b) can be
 submitted after the filing date. In addition, for applications, other than design
 applications, filed under 35 U.S.C. 111(a) on or after
 December 18, 2013, the claims and drawings may be submitted after the filing date,
 within such period and under such conditions, including the payment of a
 surcharge, as prescribed by the Office. See subsection II below for more
 information on completion of an application subsequent to filing. However, no
 amendment (including the submission of claims and drawings) may introduce new
 matter into the disclosure of an application after its filing date. Drawings
 should be submitted on filing if necessary for the understanding of the
 invention.
 

 If the required basic filing fee is not paid during the pendency
 of the application, the application will be disposed of.
 

 The basic filing fee must be paid within the pendency of a
 nonprovisional application in order to permit benefit of the application to be
 claimed under 35 U.S.C. 120 , 121 , 365(c) , or
 386(c) in a subsequent nonprovisional application,
 international application, or international design application.
 

 See 37 CFR 1.78 . Copies of an
 application will be provided by the USPTO upon request and payment of the fee set
 forth in 37 CFR
 1.19(b) unless the application has been disposed of (see
 37 CFR
 1.53(e) and (f) ). 
 

 37 CFR
 1.53(h) indicates that a patent application will not be
 forwarded for examination on the merits until all required parts have been
 received, except applications filed on or after September 16, 2012 will be
 forwarded for examination even if lacking the inventor’s oath or declaration
 provided that a compliant application data sheet (ADS) is filed.
 

 II . COMPLETION OF NONPROVISIONAL APPLICATION UNDER 35 U.S.C. 111 SUBSEQUENT TO
 FILING For applications filed under 35 U.S.C.
 111(a) on or after December 18, 2013, except for design
 applications, a filing date is granted to a nonprovisional application when a
 specification, with or without claims, is received in the Office. The filing date
 for a design application, except for a continued prosecution application (CPA)
 under 37 CFR
 1.53(d) , is the date on which the specification as required
 by 35 U.S.C.
 112 , including at least one claim, and any required drawings
 are received in the Office.
 

 For applications filed prior to December 18, 2013, a
 filing date is granted to a nonprovisional application for patent that includes at
 least 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
 referred to in the specification or required by 37 CFR
 1.81(a) , which is filed in the U.S. Patent and Trademark
 Office.
 

 A. Completion of Nonprovisional Application That Is Filed On or
 After December 18, 2013 And Is Not A Design Application [Editor Note: See subsection B., below, for information that pertains
 to all applications filed under 35 U.S.C. 111(a) on or
 after September 16, 2012 (including utility and plant patent applications
 filed on or after December 18, 2013 and design patent applications). See
 subsection C., below, for information pertaining to applications filed under
 35 U.S.C. 111(a) before September 16,
 2012.] 

 If an application which has been accorded a
 filing date does not include the appropriate filing fee, search fee,
 examination fee, or inventor's oath or declaration, applicant will be so
 notified in accordance with 37 CFR 1.53(f) . See
 subsection II.B. below for information regarding completion of a nonprovisional
 application that is missing the appropriate filing fee, search fee, examination
 fee, or inventor’s oath or declaration.
 

 If an application which has been accorded a
 filing date does not include at least one claim, the applicant will be notified
 and given a time period to file claim(s) and pay the surcharge, if required by
 37 CFR
 1.16(f) , to avoid abandonment of the application provided
 the applicant has given a correspondence address. If the applicant failed to
 provide a correspondence address, the applicant has three months from the
 filing date of the application within which to file claim(s) and pay the
 surcharge required by 37 CFR 1.16(f) to avoid
 abandonment of the application. Therefore, an application filed without any
 claims will be treated in a manner analogous to how an application without the
 filing fee, search fee, or examination fee is treated. See subsection B. below
 for more information.
 

 If an application which has been accorded a filing
 date does not include any drawings, see MPEP § 601.01(f) for
 information on completing the application. If an application which has been
 accorded a filing date but is without all the figures of drawings, see
 MPEP §
 601.01(g) for information on completing the
 application.
 

 B. Completion of Nonprovisional Application, Including Design
 Application, Filed On or After September 16, 2012 [Editor Note: See subsection A., above, for specific information
 regarding applications that are filed under 35 U.S.C.
 111(a) on or after December 18, 2013 and are not
 design applications. See subsection C., below, for applications filed before
 September 16, 2012.] 

 If an application which has been accorded a
 filing date does not include the appropriate filing fee, search fee,
 examination fee, or inventor's oath or declaration, applicant will be so
 notified in accordance with 37 CFR 1.53(f) .
 

 For applications filed before September 16, 2012,
 the Office issued a Notice to File Missing Parts if an application under
 37 CFR
 1.53(b) did not contain the basic filing fee, the search
 fee, or the examination fee, or the inventor's oath or declaration, and the
 applicant was given a time period (usually two months) within which to file the
 missing basic filing fee, the search fee, the examination fee, or the
 inventor's oath or declaration and pay the surcharge required by
 37 CFR
 1.16(f) to avoid abandonment. See subsection II.C. below
 for additional information regarding completion of a nonprovisional application
 filed before September 16, 2012.
 

 For applications filed on or after September 16,
 2012, the former missing parts practice under pre-AIA 37 CFR
 1.53(f) was revised to allow applicants to postpone
 filing the inventor's oath or declaration until the application is otherwise in
 condition for allowance. 37 CFR 1.53(f) was further
 revised, effective December 18, 2013, to require that, for applications filed
 on or after September 16, 2012, the inventor’s oath or declaration in
 compliance with 37 CFR 1.63 or a substitute
 statement in compliance with 37 CFR 1.64 must be filed
 no later than the date the issue fee is paid to avoid abandonment of the
 application. This time period is not extendable under 37 CFR
 1.136 (see 37 CFR 1.136(c) ). The
 Office may dispense with the notice under 37 CFR
 1.53(f)(1) if each required oath or declaration in
 compliance with 37 CFR 1.63 or substitute
 statement in compliance with 37 CFR 1.64 has been filed
 before the application is in condition for allowance.
 

 37 CFR
 1.53(f)(1) provides for a notice (if the applicant has
 provided a correspondence address) if the application does not contain the
 basic filing fee, the search fee, or the examination fee, or if the application
 under 37
 CFR 1.53(b) does not contain the inventor's oath or
 declaration. 37 CFR 1.53(f)(1) provides
 that applicant must pay the basic filing fee, search fee, and examination fee,
 and pay the surcharge if required by 37 CFR 1.16(f) within the
 time period set in the notice to avoid abandonment. 
 

 Section 1.53(f)(3) (discussed subsequently) sets forth
 the time period for filing the inventor's oath or declaration in an application
 under 37
 CFR 1.53(b) and provides the conditions under which an
 applicant may postpone filing the inventor's oath or declaration until the
 application is otherwise in condition for allowance.
 

 37 CFR
 1.53(f)(2) provides for the situation where applicant has
 not provided a correspondence address in an application under 37 CFR
 1.53(b) , and the application does not contain the basic
 filing fee, the search fee, or the examination fee, or does not contain the
 inventor's oath or declaration. 37 CFR 1.53(f)(2) provides
 that if the applicant has not provided a correspondence address, the applicant
 must pay the basic filing fee, search fee, and examination fee, and pay the
 surcharge if required by 37 CFR 1.16(f) , within
 three months from the filing date of the application to avoid abandonment. 
 

 37
 CFR 1.53(f)(3) sets forth the time period for filing the
 inventor's oath or declaration in an application under 37 CFR
 1.53(b) and provides the conditions under which an
 applicant may postpone filing the inventor's oath or declaration until the
 application is otherwise in condition for allowance. Section
 1.53(f)(3) specifically provides that the inventor's oath
 or declaration in an application under 37 CFR 1.53(b) must also be
 filed within the period specified in 37 CFR 1.53(f)(1) or
 (f)(2) , except that the filing of the inventor's oath or
 declaration may be postponed until the application is otherwise in condition
 for allowance under the conditions specified in 37 CFR
 1.53(f)(3)(i) through (f)(3)(ii) . This requires payment
 of the surcharge under 37 CFR 1.16(f) if the
 inventor’s oath or declaration (executed by or with respect to each inventor)
 is not submitted on filing of the application. If the surcharge is not paid at
 the time the application is filed, the Office will send a Notice to File
 Missing Parts requiring the surcharge. If, however, a general authorization to
 charge any required fees to a deposit account (that covers fees under
 37 CFR
 1.16 ) is submitted on filing of the application, the
 Office will charge the surcharge in accordance with the deposit account
 authorization. Payment of the surcharge cannot be postponed until a Notice of
 Allowance issues or payment of the issue fee but must be paid in the time
 period specified in 37 CFR 1.53(f)(1) or
 37 CFR
 1.53(f)(2) .
 

 37
 CFR 1.53(f)(3)(i) provides that the application must be
 an original (non-reissue) application that contains an application data sheet
 in accordance with 37 CFR 1.76 identifying:
 (1) each inventor by their legal name; and (2) a mailing address where the
 inventor customarily receives mail, and residence, if an inventor lives at a
 location which is different from where the inventor customarily receives mail,
 for each inventor. The applicant must file an oath or declaration in compliance
 with 37
 CFR 1.63 , or substitute statement in compliance with
 37 CFR
 1.64 , executed by or with respect to each actual inventor
 no later than the date on which the issue fee is paid. See 35 U.S.C.
 115(f) .
 

 If an application under 37 CFR
 1.53(b) does not include the inventor's oath or
 declaration but does contain the applicable filing fees (basic filing fee,
 search fee, the examination fee, any applicable excess claims fee, and any
 applicable application size fee), the surcharge required by 37 CFR
 1.16(f) (for filing the oath or declaration later than
 the filing date), and a signed application data sheet providing the information
 required by 37 CFR 1.53(f)(3)(i) , the
 Office will not issue a Notice to File Missing Parts requiring the applicant to
 file the inventor's oath or declaration.
 

 If an application under 37 CFR
 1.53(b) that does not contain the inventor's oath or
 declaration also does not contain the applicable filing fees, or the surcharge
 required by 37 CFR 1.16(f) , or a signed application data sheet
 providing the information required by 37 CFR
 1.53(f)(3)(i) , the Office will issue a Notice to File
 Missing Parts giving the applicant a time period (usually two months) within
 which to file the missing parts. While the inventor's oath or declaration will
 not be required to be filed within the period for reply to the Notice to File
 Missing Parts if the applicant provides a signed application data sheet
 providing the information required by 37 CFR
 1.53(f)(3)(i) , any required filing fees and surcharge
 required by 37 CFR 1.16(f) must be filed within the period for reply
 to the Notice to File Missing Parts to avoid abandonment.
 

 If an application is in condition for allowance
 but does not include an oath or declaration in compliance with
 37 CFR
 1.63 , or a substitute statement in compliance with
 37 CFR
 1.64 , executed by or with respect to each actual
 inventor, the Office will issue a “Notice of Allowance and Fee(s) Due”
 (PTOL-85) together with a "Notice of Allowability'' (PTOL-37) including a
 "Notice Requiring Inventor’s Oath or Declaration" (PTOL-2306) requiring the
 applicant to file an oath or declaration in compliance with 37 CFR
 1.63 , or substitute statement in compliance with
 37 CFR
 1.64 , executed by or with respect to each actual
 inventor, no later than the date of payment of the issue fee to avoid
 abandonment. If applicant receives a “Notice Requiring Inventor’s Oath or
 Declaration” and fails to file a proper reply to the notice before or with the
 payment of the issue fee, the application will be regarded as abandoned. See
 37 CFR 1.53(f)(3)(ii) .
 

 C. Completion of Nonprovisional Application Filed Before September
 16, 2012 [Editor Note: See subsections A. and B., above, for applications filed
 under 35 U.S.C. 111 on or
 after December 18, 2013. See subsection B., above, for applications filed on
 or after September 16, 2012.] 

 If an application which has been accorded a
 filing date does not include the appropriate filing fee, search fee,
 examination fee, or oath or declaration, applicant will be so notified in
 accordance with pre-AIA 37 CFR 1.53(f) and
 given a period of time within which to file the missing parts to complete the
 application and to pay the surcharge as set forth in 37 CFR
 1.16(f) in order to prevent abandonment of the
 application
 

 Applicants should submit a copy of any notice to file missing
 parts or notice of incomplete application with the reply submitted to the U.S.
 Patent and Trademark Office, unless the reply is being submitted via the USPTO
 patent electronic filing system. Applicants should also include the application
 number on all correspondence to the Office. These measures will aid the Office
 in matching papers to applications, thereby expediting the processing of
 applications.
 

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

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

 III. APPLICATION UNDER 35 U.S.C. 111(a) FILED BY REFERENCE 
 35 U.S.C. 111 
 Application. 

 [Editor Note: Applicable to any patent application filed under this
 provision on or after December 18, 2013. See pre-PLT (AIA) 35
 U.S.C. 111 or pre-AIA 35 U.S.C. 111 
 for the law otherwise applicable.] 

 
 (a) IN GENERAL.—
 
 (1) WRITTEN APPLICATION.—An application
 for patent shall be made, or authorized to be made, by the
 inventor, except as otherwise provided in this title, in writing to
 the Director.
 

 (2) CONTENTS.—Such application shall
 include—
 
 (A) a specification as prescribed by
 section
 112 ;
 

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

 (C) an oath or declaration as
 prescribed by section
 115 .
 

 
 

 (3) FEE, OATH OR DECLARATION, AND
 CLAIMS.—The application shall be accompanied by the fee required by
 law. The fee, oath or declaration, and 1 or more claims may be
 submitted after the filing date of the application, within such
 period and under such conditions, including the payment of a
 surcharge, as may be prescribed by the Director. Upon failure to
 submit the fee, oath or declaration, and 1 or more claims within
 such prescribed period, the application shall be regarded as
 abandoned.
 

 (4) FILING DATE.—The filing date of an
 application shall be the date on which a specification, with or
 without claims, is received in the United States Patent and
 Trademark Office.
 

 
 

 
 *****

 
 (c) PRIOR FILED APPLICATION.—Notwithstanding the
 provisions of subsection (a), the Director may prescribe the conditions,
 including the payment of a surcharge, under which a reference made upon
 the filing of an application under subsection (a) to a previously filed
 application, specifying the previously filed application by application
 number and the intellectual property authority or country in which the
 application was filed, shall constitute the specification and any
 drawings of the subsequent application for purposes of a filing date. A
 copy of the specification and any drawings of the previously filed
 application shall be submitted within such period and under such
 conditions as may be prescribed by the Director. A failure to submit the
 copy of the specification and any drawings of the previously filed
 application within the prescribed period shall result in the application
 being regarded as abandoned. Such application shall be treated as having
 never been filed, unless— 
 
 (1) the application is revived under
 section 27 ; and
 
 

 (2) a copy of the specification and any
 drawings of the previously filed application are submitted to the
 Director.
 

 
 

 
 

 
 37 CFR 1.57 Incorporation by reference 

 [Editor Note: Paragraph (a) below is only applicable to patent
 applications filed under 35 U.S.C. 111(a) on or
 after December 18, 2013.] 

 
 (a) Subject to the conditions and requirements
 of this paragraph, a reference made in the English language in an
 application data sheet in accordance with §
 1.76 upon the filing of an application under
 35 U.S.C. 111(a) to a
 previously filed application, indicating that the specification and any
 drawings of the application under 35 U.S.C.
 111(a) are replaced by the reference to the
 previously filed application, and specifying the previously filed
 application by application number, filing date, and the intellectual
 property authority or country in which the previously filed application
 was filed, shall constitute the specification and any drawings of the
 application under 35 U.S.C. 111(a) for
 purposes of a filing date under § 1.53(b) .
 
 (1) If the applicant has provided a
 correspondence address ( § 1.33(a) ), the
 applicant will be notified and given a period of time within which
 to file a copy of the specification and drawings from the
 previously filed application, an English language translation of
 the previously filed application, and the fee required by
 § 1.17(i) if it
 is in a language other than English, and pay the surcharge required
 by § 1.16(f) , to
 avoid abandonment. Such a notice may be combined with a notice
 under § 1.53(f) .
 

 (2) If the applicant has not provided a
 correspondence address ( § 1.33(a) ), the
 applicant has three months from the filing date of the application
 to file a copy of the specification and drawings from the
 previously filed application, an English language translation of
 the previously filed application, and the fee required by
 § 1.17(i) if it
 is in a language other than English, and pay the surcharge required
 by § 1.16(f) , to
 avoid abandonment. 
 

 (3) An application abandoned under
 paragraph (a)(1) or (a)(2) of this section shall be treated as
 having never been filed, unless:
 
 (i) The application is revived
 under § 1.137 ;
 and
 

 (ii) A copy of the specification and
 any drawings of the previously filed application are filed in
 the Office.
 

 
 

 (4) A certified copy of the previously
 filed application must be filed in the Office, unless the
 previously filed application is an application filed under
 35 U.S.C. 111 
 or 363 , or the
 previously filed application is a foreign priority application and
 the conditions set forth in §
 1.55(i) are satisfied with respect to such
 foreign priority application. The certified copy of the previously
 filed application, if required by this paragraph, must be filed
 within the later of four months from the filing date of the
 application or sixteen months from the filing date of the
 previously filed application, or be accompanied by a petition
 including a showing of good and sufficient cause for the delay and
 the petition fee set forth in §
 1.17(g) .
 

 
 

 
 *****

 

 Effective December 18, 2013, title II of the Patent
 Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to
 implement the provisions of the Patent Law Treaty. Section 201(a) of the PLTIA
 amended 35
 U.S.C. 111 to add 35 U.S.C.
 111(c) . As provided in 35 U.S.C.
 111(c) , a nonprovisional application filed under
 35
 U.S.C. 111(a) on or after December 18, 2013, may be filed by
 a reference to a previously filed application (foreign, international,
 provisional, or nonprovisional) indicating that the specification and any drawings
 of the application are replaced by the reference to the previously filed
 application. 35 U.S.C. 111(c) specifically
 provides that the Director may prescribe the conditions, including the payment of
 a surcharge, under which a reference made upon the filing of an application under
 35
 U.S.C. 111(a) to a previously filed application (specifying
 the previously filed application by application number and the intellectual
 property authority or country in which the application was filed) shall constitute
 the specification and any drawings of the subsequent application for purposes of a
 filing date. 35 U.S.C. 111(c) further
 provides that a copy of the specification and any drawings of the previously filed
 application shall be submitted within such period and under such conditions as may
 be prescribed by the Director, and that a failure to submit the copy of the
 specification and any drawings of the previously filed application within the
 prescribed period shall result in the application being regarded as abandoned.
 35
 U.S.C. 111(c) finally provides that such an application
 shall be treated as having never been filed, unless: (1) the application is
 revived under 35 U.S.C. 27 ; and (2) a copy
 of the specification and any drawings of the previously filed application are
 submitted to the Director.
 

 Effective December 18, 2013, 37 CFR
 1.57 was amended to implement the reference filing
 provisions of 35 U.S.C. 111(c) .
 37 CFR
 1.57(a) now provides that, subject to the conditions and
 requirements of 37 CFR 1.57(a) , a reference,
 made in the English language in an application data sheet (ADS) in accordance with
 37 CFR
 1.76 upon the filing of an application under
 35
 U.S.C. 111(a) , to a previously filed application, indicating
 that the specification and any drawings of the application under 35 U.S.C.
 111(a) are replaced by the reference to the previously filed
 application, and specifying the previously filed application by application
 number, filing date, and the intellectual property authority or country in which
 the previously filed application was filed, shall constitute the specification and
 any drawings of the application under 35 U.S.C. 111(a) for purposes
 of a filing date under 37 CFR 1.53(b) . Thus, the
 specification and any drawings of the previously filed application will be
 considered in determining whether an application under 35 U.S.C.
 111(a) filed by reference under 37 CFR
 1.57(a) is entitled to a filing date under 37 CFR
 1.53(b) . When an application for a design patent includes a
 reference to a previously filed application under 35 U.S.C.
 111(c) , the previously filed application must include at
 least one claim. 35 U.S.C. 171 provides that the filing date of an
 application for a design patent is the date on which the specification as
 prescribed by 35 U.S.C. 112 , which includes at least one claim, and any
 required drawings are filed.
 

 In a reference filing under 37 CFR
 1.57(a) , the reference to a previously filed application in
 an ADS is not sufficient to establish a priority or benefit claim to that
 previously filed application. Reference filing information is provided in a
 section of the ADS that is separate from the foreign priority information section
 and the domestic benefit claim information section. See MPEP §
 211 et seq. for information regarding domestic benefit claims and
 MPEP § 213 et seq. for information regarding claims for foreign
 priority.
 

 The PLT and the Regulations under the PLT provide
 for the establishment of Model International Forms (PLT Model forms). The PLT
 Model forms may be found on WIPO’s Internet website at https://wipolex.wipo.int/en/text/289773 . The requirement for a
 reference to the previously filed application in an ADS will be satisfied by the
 presentation of such reference to the previously filed application on the Patent
 Law Treaty Model International Request Form (PLT Model Request form). Applicants
 may use the PLT Model Request form for national applications under
 35
 U.S.C. 111 filed in the USPTO or national applications filed
 in other PLT countries. However, as provided in 37 CFR
 1.76(d)(2) , information in an ADS will govern when
 inconsistent with the information supplied at any time in PLT Model forms.
 Furthermore, if applicants want to postpone submission of the inventor’s oath or
 declaration until the application is in condition for allowance, an ADS that
 provides the inventor information is required. Accordingly, the use of an ADS to
 supply application information for reference filing is encouraged.
 

 If the applicant has provided a correspondence
 address ( 37
 CFR 1.33(a) ), the applicant will be notified and given a
 period of time within which to file a copy of the specification and drawings from
 the previously filed application, an English language translation of the
 previously filed application and the fee required by 37 CFR
 1.17(i) if it is in a language other than English, and pay
 the surcharge required by 37 CFR 1.16(f) , to avoid
 abandonment. Such a notice may be combined with a notice under 37 CFR
 1.53(f) (e.g., a notice requiring that the applicant provide
 at least one claim and pay the filing fees). See 37 CFR
 1.57(a)(1) .
 

 If the applicant has not provided a correspondence
 address ( 37
 CFR 1.33(a) ), the applicant has three months from the filing
 date of the application under 35 U.S.C. 111(a) filed by
 reference under 37 CFR 1.57(a) to file a copy
 of the specification and drawings from the previously filed application, an
 English language translation of the previously filed application and the fee
 required by 37 CFR 1.17(i) if it is in a
 language other than English, and pay the surcharge required by 37 CFR
 1.16(f) , to avoid abandonment. See 37 CFR
 1.57(a)(2) .
 

 In response to a notice requiring a copy of the
 specification and drawings from the previously filed application, applicants must
 submit an actual copy of the specification (including any claims) and any drawings
 of the previously filed application without any modifications. If the
 specification and drawings submitted in response to the notice are modified, i.e.,
 updated, corrected, or reformatted in any manner, such modified specification and
 any modified drawings would not satisfy the copy requirement of 35 U.S.C.
 111(c) and 37 CFR 1.57(a) . Any desired
 changes to the copy of the previously filed application must be made by way of an
 amendment under 37 CFR 1.121 without adding new matter. 
 

 An application abandoned under 37 CFR 1.57(a)(1) or
 (a)(2) shall be treated as having never been filed, unless:
 (1) the application is revived under 37 CFR 1.137 ; and (2) a copy
 of the specification and any drawings of the previously filed application are
 filed in the Office. See 37 CFR 1.57(a)(3) .
 

 An applicant may also claim priority to or the
 benefit of an application filed by reference under 35 U.S.C.
 111(c) and 37 CFR 1.57(a) . However, the
 phrase ”treated as having never been filed” in 35 U.S.C.
 111(c) and 37 CFR 1.57(a)(3) precludes an
 applicant from claiming priority to or the benefit of an application filed by
 reference that has been abandoned under 35 U.S.C.
 111(c) and 37 CFR 1.57(a)(1) or
 1.57(a)(2) . An applicant may claim priority to or the
 benefit of an application abandoned under 35 U.S.C.
 111(c) and 37 CFR 1.57(a)(1) or
 (a)(2) only if the application is revived under
 37 CFR
 1.137 and a copy of the specification and any drawings of
 the previously filed application are submitted to the Office.
 

 A certified copy of the previously filed application
 must be filed in the Office within the later of four months from the filing date
 of the application or sixteen months from the filing date of the previously filed
 application, unless the previously filed application is an application filed under
 35
 U.S.C. 111 or 35 U.S.C. 363 , or the
 previously filed application is a foreign priority application and the conditions
 set forth in 37 CFR 1.55(h) are satisfied
 with respect to such foreign priority application. See 37 CFR
 1.57(a)(4) . 
 

 If a certified copy is required under
 37
 CFR 1.57(a)(4) and it is not filed within the later of four
 months from the filing date of the application or sixteen months from the filing
 date of the previously filed application, the certified copy must be accompanied
 by a petition including a showing of good and sufficient cause for the delay and
 the petition fee set forth in 37 CFR 1.17(g) . The
 requirement for a certified copy of a previously filed foreign application is to
 ensure that the copy of the specification and any drawings subsequently provided
 by the applicant correspond to the specification and any drawings of the
 previously filed foreign application. The interim copy provision of
 37
 CFR 1.55(j) is not applicable to the requirement for a
 certified copy of a previously filed foreign application in an application filed
 by reference under 35 U.S.C. 111(c) and
 37 CFR
 1.57(a) .
 

 Applicants filing by reference under
 35
 U.S.C. 111(c) and 37 CFR 1.57 should take care
 to ensure that the application number, filing date, and intellectual property
 authority or country of the previously filed application is accurately specified
 on the ADS as the specification and drawings of the application specified on the
 ADS is the specification and drawings of the application being filed by reference
 under 35
 U.S.C. 111(c) and 37 CFR 1.57 . If an applicant
 specifies an application number, filing date, or intellectual property authority
 or country of an application other than the application number, filing date, or
 intellectual property authority or country of the intended previously filed
 application on the ADS (i.e., the applicant mistypes the application number,
 filing date, or intellectual property authority or country on the ADS), the
 applicant may file a petition under 37 CFR 1.53 to have the
 application accorded a filing date as of the date the specification and drawings
 of the intended previously filed application is filed in the Office using that
 specification and drawings (rather than the specification and drawings of the
 application specified on the ADS). Simply submitting the specification and
 drawings of the intended previously filed application without such a petition
 under 37 CFR
 1.53 in reply to a notice under 37 CFR
 1.57(a) requiring the specification and drawings of the
 application specified on the ADS will result in the submission being treated as an
 incomplete reply. A reference filing statement made upon filing cannot be
 rescinded because the reference to the previously filed application constitutes
 the specification and any drawings of the instant application. See
 35
 U.S.C. 111(c) . Accordingly, to avoid the risk of incorrect
 filings and the required surcharge, applicants should simply file a copy of the
 specification and drawings of the previously filed application, if available,
 instead of relying upon the reference filing provisions.
 

 If the previously filed application is also a
 priority application under 35 U.S.C. 119(a) through (d) and
 (f) , 172 , 35 U.S.C. 365(a) or
 (b) , or 35 U.S.C. 386(a) or (b) and
 37 CFR
 1.55 , an applicant should also consider filing a copy of the
 specification and drawings of the previously filed application in the Office no
 later than fourteen month from the filing date of the previously filed application
 (regardless of the time period provided in 37 CFR 1.57(a) ) to avoid the
 loss of the right of priority under 37 CFR 1.55 in the event that
 the application number, filing date, or intellectual property authority or country
 of an application specified on the ADS is not the application number, filing date,
 or intellectual property authority or country of the intended previously filed
 application.
 

 An application filed to obtain a filing date which
 includes both a reference to a previously filed application as provided for in
 37 CFR
 1.57(a) and application papers including a specification and
 drawings will be processed as a reference filing and applicant will be charged the
 surcharge under 37 CFR 1.16(f) even though a specification and drawings
 were submitted with the reference filing. The ADS form indicates that “the
 description and any drawings of the present application are replaced by this
 reference to the previously filed application.” Accordingly, the Office will send
 out a notice (e.g., Notice to File Missing Parts) requiring the surcharge and a
 copy of the specification and any drawings. Applicants must respond to the notice
 by filing a copy of the specification and any drawings of the previously filed
 application or by stating that the specification and drawings submitted on filing
 is a copy of the specification and drawings of the previously filed application.
 If the specification and drawings submitted on filing were not a copy of the
 specification and drawings of the previously filed application but instead were
 modified, i.e., updated, corrected, or reformatted in any manner, such modified
 specification and any modified drawings would not satisfy the copy requirement of
 35
 U.S.C. 111(c) and 37 CFR 1.57(a) . In response to
 the notice, applicant must submit a copy of the specification and any drawings of
 the previously filed application. Any desired changes to the copy of the
 previously filed application must be made by way of an amendment under
 37 CFR
 1.121 without adding new matter. The modified specification
 and any drawings that were submitted on filing would not constitute the
 specification and drawings of the instant application and thus would not be used
 for examination purposes. However, applicant may file a petition under
 37 CFR
 1.182 , including the fee under 37 CFR
 1.17(f) , requesting that the modified specification and any
 drawings submitted on filing be removed from the file of the application filed by
 reference, and be accorded the status as a separate application by being placed in
 a new file wrapper and assigned a new application number, with the new application
 being accorded a filing date as of the date the application filed by reference was
 filed. An application filed by reference is not improper simply because it is
 accompanied by a specification and drawings. Thus, an applicant will not be
 entitled to a refund of the filing fees paid in a proper application filed by
 reference. If the petition under 37 CFR 1.182 requesting that
 the modified specification and any drawings be removed from the file of the
 application filed by reference is granted, new filing fees, including the
 surcharge required by 37 CFR 1.16(f) , would be
 needed for the new application created as a result of the grant of the
 petition.
 

 Reference filing is intended for situations when a
 copy of the previously filed application is not available at the time the current
 application is being filed. If a copy of the previously filed application is
 available, applicant should file the copy of the specification and drawings under
 35
 U.S.C. 111(a) and 37 CFR 1.51(b) and not
 complete the section of the ADS for filing by reference. As explained above, if
 the reference filing section of the ADS is completed, applicants will be required
 to pay the surcharge under 37 CFR 1.16(f) , even if a copy
 of the previously filed application is present on filing the application. A
 reference filing statement made upon filing cannot be rescinded because the
 reference to the previously filed application constitutes the specification and
 any drawings of the instant application. See 35 U.S.C.
 111(c) .
 

 There is no provision for the filing of a
 continuation-in-part of a previously filed application under 37 CFR
 1.57(a) . 35 U.S.C. 111(c) provides that
 the reference to the previously filed application “shall constitute the
 specification and any drawings of the subsequent application.” The specification
 and any drawings of a continuation-in-part would need to extend beyond the
 specification and any drawings of the previously filed application. Thus, the
 filing by reference of a continuation-in-part of the previously filed application
 is not contemplated by 35 U.S.C. 111(c) .
 

 

 
 601.01(b) Provisional Applications Filed Under 35 U.S.C.
 111(b) [R-07.2015]
 

 A provisional application filed on or after December 18, 2013 will be
 given a filing date as of the date a specification, with or without claims, is
 received in the Office. For provisional applications filed prior to December 18,
 2013, the application will be given a filing date in accordance with
 pre-PLT
 (AIA) 37 CFR 1.53(c) as of the date the written description and
 any necessary drawings are filed in the Office. The filing date requirements for a
 provisional application set forth in 37 CFR 1.53(c) substantially
 parallel the requirements for a nonprovisional application set forth in
 37 CFR
 1.53(b) . Amendments, other than those required to make the
 provisional application comply with applicable regulations, are not permitted after
 the filing date of the provisional application.
 

 When the specification or drawing are omitted, 37 CFR 1.53(e) 
 requires that the applicant be notified and given a time period in which to submit
 the missing element to complete the filing. See MPEP § 601.01(f) 
 and §
 601.01(g) for treatment of applications filed without
 drawings, or filed without all figures of drawings, respectively.
 

 37 CFR
 1.53(c)(1) requires all provisional applications be filed with
 a cover sheet, which may be an application data sheet ( 37 CFR 1.76 ) or
 a cover letter identifying the application as a provisional application. The Office
 will treat an application as having been filed under 37 CFR
 1.53(b) , unless the application is clearly identified as a
 provisional application. A provisional application, which is identified as such, but
 which does not have a complete cover sheet as required by 37 CFR
 1.51(c)(1) will be treated as a provisional application.
 However, the complete cover sheet and a surcharge will be required to be submitted at
 a later date in conformance with 37 CFR 1.53(g) .
 

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

 The basic filing fee must be paid in a provisional application on
 filing or within the time period set forth in 37 CFR 1.53(g) , and the
 provisional application must be entitled to a filing date under 37 CFR 1.53(c) ,
 if any claim for benefits under 35 U.S.C. 119(e) based on that
 application is made in a subsequently filed nonprovisional application. See
 37 CFR
 1.78 .
 

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

 

 
 601.01(c) Conversion to or from a Provisional Application [R-07.2015]
 I. CONVERSION FROM A NONPROVISIONAL APPLICATION TO A PROVISIONAL
 APPLICATION 
 37 CFR 1.53 Application number, filing date, and completion of
 application. 

 *****

 
 (c) 
 
 *****

 (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 section. The
 grant of such a request for conversion will not entitle applicant
 to a refund of the fees that were properly paid in the application
 filed under paragraph (b) of this section. Such a request for
 conversion must be accompanied by the processing fee set forth in
 § 1.17(q) and
 be filed prior to the earliest of:
 
 (i) Abandonment of the application filed under
 paragraph (b) of this section;
 

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

 (iii) Expiration of twelve months after the filing
 date of the application filed under paragraph (b) of this
 section. 
 

 
 

 
 

 
 *****

 

 An application filed under 37 CFR 1.53(b) may be
 converted to a provisional application in accordance with the procedure described
 in 37 CFR
 1.53(c)(2) . The procedure requires the filing of a request
 for conversion and the processing fee set forth in 37 CFR
 1.17(q) . The provisional application filing fee
 ( 37 CFR
 1.16(d) ) and the surcharge set forth in 37 CFR
 1.16(g) are also required, although these fees do not need
 to be paid with the request for conversion. If the provisional application filing
 fee and the surcharge are not paid at the time of filing of the request for
 conversion, the Office will send a Notice to File Missing Parts in the provisional
 application requiring these fees. Filing of the request in the nonprovisional
 application is required prior to the abandonment of the 37 CFR
 1.53(b) application, the payment of the issue fee, or the
 expiration of 12 months after the filing date of the 37 CFR
 1.53(b) application, whichever event is earlier. The grant
 of any such request does not entitle applicant to a refund of the fees properly
 paid in the application filed under 37 CFR 1.53(b) .
 

 Converting a nonprovisional application to a provisional
 application will not avoid the publication of the nonprovisional application
 unless the request to convert is recognized in sufficient time to permit the
 appropriate officials to remove the nonprovisional application from the
 publication process. The Office cannot ensure that it can remove an application
 from publication or avoid publication of application information any time after
 the publication process for the application has been initiated. For information on
 procedures for removing an application from publication, see MPEP §
 1120 .
 

 A provisional application is not entitled to claim priority to or
 benefit of a prior-filed application under 35 U.S.C. 119 ,
 120 , 121 , 365 , or
 386 . See MPEP §
 201.04 . After the nonprovisional application has been
 converted to a provisional application, any priority or benefit claims submitted
 in the nonprovisional application will be disregarded.
 

 Applicants who wish to file a request for conversion under
 37 CFR
 1.53(c)(2) by mail should designate “Mail Stop Conversion”
 as part of the U. S. Patent and Trademark Office address.
 

 II. CONVERSION FROM A PROVISIONAL APPLICATION TO A NONPROVISIONAL
 APPLICATION 
 37 CFR 1.53 Application number, filing date, and completion of
 application. 

 [Editor Note: Applicable to patent applications filed under
 35 U.S.C. 111 on or after December 18, 2013. See
 pre-PLT (AIA) 37 CFR 1.53(c) for the rule otherwise
 in effect.] 

 *****

 
 (c) 
 
 *****

 (3) A provisional application filed under paragraph (c)
 of this section may be converted to a nonprovisional application
 filed under paragraph (b) of this section and accorded the original
 filing date of the provisional application. The conversion of a
 provisional application to a nonprovisional application will not
 result in either the refund of any fee properly paid in the
 provisional application or the application of any such fee to the
 filing fee, or any other fee, for the nonprovisional application.
 Conversion of a provisional application to a nonprovisional
 application under this paragraph will result in the term of any
 patent to issue from the application being measured from at least
 the filing date of the provisional application for which conversion
 is requested. Thus, applicants should consider avoiding this
 adverse patent term impact by filing a nonprovisional application
 claiming the benefit of the provisional application under
 35 U.S.C.
 119(e) , rather than converting the
 provisional application into a nonprovisional application pursuant
 to this paragraph. A request to convert a provisional application
 to a nonprovisional application must be accompanied by the fee set
 forth in § 1.17(i) and
 an amendment including at least one claim as prescribed by
 35 U.S.C.
 112(b) , unless the provisional application
 under paragraph (c) of this section otherwise contains at least one
 claim as prescribed by 35
 U.S.C. 112(b) . The nonprovisional application
 resulting from conversion of a provisional application must also
 include the filing fee, search fee, and examination fee for a
 nonprovisional application, and the surcharge required by
 § 1.16(f) if
 either the basic filing fee for a nonprovisional application or the
 inventor's oath or declaration was not present on the filing date
 accorded the resulting nonprovisional application ( 
 i.e., the filing date of the original provisional
 application). A request to convert a provisional application to a
 nonprovisional application must also be filed prior to the earliest
 of:
 
 (i) Abandonment of the provisional application
 filed under paragraph (c) of this section; or
 

 (ii) Expiration of twelve months after the filing
 date of the provisional application filed under paragraph (c)
 of this section.
 

 
 

 
 

 
 *****

 

 An application filed under 37 CFR 1.53(c) may be
 converted to a nonprovisional application in accordance with the procedure
 described in 37
 CFR 1.53(c)(3) . Applicants should carefully consider the
 patent term consequences of requesting conversion rather than simply filing a
 nonprovisional application claiming the benefit of the filing date of the
 provisional application under 35 U.S.C. 119(e) . Claiming the
 benefit of the provisional application under 35 U.S.C. 119(e) is less
 expensive and will result in a longer patent term. The procedure requires the
 filing of a request in the provisional application for the conversion of the
 provisional application to a nonprovisional application and the fee set forth in
 37 CFR 1.17(i) . The nonprovisional application resulting
 from conversion of a provisional application must also include the basic filing
 fee, search fee, and examination fee for the nonprovisional application. In
 addition, if the provisional application was not filed with an executed oath or
 declaration and the appropriate fees for a nonprovisional application, the
 surcharge set forth in 37 CFR 1.16(f) is required.
 Furthermore, an inventor’s oath or declaration is required to be filed in
 accordance with 37 CFR 1.53(f) if the
 provisional application was filed on or after September 16, 2012 or
 pre-AIA
 37 CFR 1.53(f) if the provisional application was filed
 prior to September 16, 2012. See MPEP § 601.01(a) . Filing of the
 request for conversion in the provisional application is required prior to the
 abandonment of the provisional application or the expiration of 12 months after
 the filing date of the 37 CFR 1.53(c) application,
 whichever event is earlier. The grant of any such request does not entitle
 applicant to a refund of the fees properly paid in the application filed under
 37 CFR
 1.53(c) .
 

 Applicants who wish to file a request for conversion under
 37 CFR
 1.53(c)(3) by mail should designate “Mail Stop Conversion”
 as part of the U. S. Patent and Trademark Office address.
 

 

 
 601.01(d) Application Filed Without All Pages of
 Specification [R-07.2022]
 

 The Office of Patent Application Processing (OPAP) reviews
 application papers to determine whether all of the pages of specification are present
 in the application. For an application filed under 37 CFR 1.53(b) or
 (c) prior to December 18, 2013 or a design application, if the
 application is filed without all of the page(s) of the specification, but containing
 something that can be construed as a written description, at least one drawing
 figure, if necessary under 35 U.S.C. 113 (first sentence),
 and, in a nonprovisional application, at least one claim, an OPAP notice (e.g., a
 “Notice of Omitted Items”) will be sent indicating that the application papers so
 deposited have been accorded a filing date, but are lacking some page(s) of the
 specification. For an application other than a design application filed under
 37 CFR
 1.53(b) or (c) on or after December 18, 2013, if the
 application is filed without all of the page(s) of the specification, but contains
 something that can be construed as a specification, with or without claims, an OPAP
 notice (e.g., a “Notice of Omitted Items”) will be sent indicating that the
 application papers so deposited have been accorded a filing date, but are lacking
 some page(s) of the specification.
 

 If the application does not contain anything
 that can be construed as a written description, OPAP will mail a Notice of Incomplete
 Application indicating that the application lacks the specification required by
 35 U.S.C.
 112 and no filing date is granted.
 

 I. APPLICATION ENTITLED TO FILING DATE The procedure for handling nonprovisional application papers
 having omitted items was revised in “Change in Procedure for Handling
 Nonprovisional Applications Having Omitted Items,” 1315 OG 103 (February 20,
 2007). Under the revised procedure, the mailing of an OPAP notice regarding a
 missing page(s) of specification in a nonprovisional application will permit the
 applicant to:
 

 
 (A) promptly establish prior receipt in the USPTO of the page(s)
 at issue. An applicant asserting that the page(s) was in fact received by
 the USPTO with the application papers must, within two months from the date
 of the OPAP notice, file a petition under 37 CFR
 1.53(e) with the petition fee set forth in
 37 CFR 1.17(f) , along
 with evidence of such deposit. The petition fee will be refunded if it is
 determined that the page(s) was in fact received by the USPTO with the
 application papers deposited on filing. The two-month period is extendable
 under 37
 CFR 1.136 ;
 

 (B) promptly submit the omitted page(s) in a nonprovisional
 application and accept the date of such submission as the application filing
 date. An applicant desiring to submit the omitted page(s) in a
 nonprovisional application and accept the date of such submission as the
 application filing date must, within two months from the date of the OPAP
 notice, file any omitted page(s) and a petition under 37 CFR
 1.182 with the petition fee set forth in
 37 CFR 1.17(f) ,
 requesting the later filing date. The two-month period is extendable under
 37 CFR
 1.136 . For applications filed before September 16,
 2012, an oath or declaration in compliance with pre-AIA 37 CFR 1.63
 and pre-AIA 37 CFR 1.64 
 must be filed with the omitted page(s) and refer to such page(s); or
 

 (C) accept the application as deposited in the USPTO by filing
 an appropriate amendment. Applicant may accept the application as deposited
 in the USPTO by either:
 
 (1) filing a substitute specification (including claims)
 that amends the specification to renumber the pages consecutively and
 cancels any incomplete sentences, in compliance with 37 CFR
 1.121(b)(3) and 1.125 , without adding the subject matter that
 was in the omitted page(s) and without adding any new matter (see
 35 U.S.C. 132(a) ). For a missing page of the
 claim listing only, applicant is required to submit a replacement
 claim listing with the claims renumbered consecutively, or, if
 amendment to the claims is also necessary, then a complete claim
 listing in compliance with 37 CFR 1.121(c) .
 The application will maintain the filing date as of the date of
 deposit of the application papers in the USPTO, and the original
 application papers (i.e., the original disclosure of the invention)
 will include only those application papers present in the USPTO on the
 date of deposit , or
 

 (2) filing a substitute specification
 (excluding claims), in compliance with 37 CFR
 1.121(b)(3) and 1.125 , to add the subject matter in the omitted
 page(s) by relying on an incorporation by reference under
 37 CFR 1.57(b) or
 other portions of the original disclosure, without any adding new
 matter (see 35 U.S.C. 132(a) ). For a
 missing page of the claim listing, applicant is required to submit a
 complete claim listing in compliance with 37 CFR
 1.121(c) . If an application was filed on or
 after September 21, 2004, and 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, or
 international application that was present on the filing date of the
 application, and the omitted portion of the specification was
 inadvertently omitted from the application and is completely contained
 in the prior-filed application, applicant may submit an amendment to
 include the inadvertently omitted portion of the specification
 pursuant to 37 CFR 1.57(b) .
 The amendment should be identified as an amendment pursuant to
 37 CFR 1.57(b) and
 must comply with the requirements of 37 CFR
 1.57(b) and 37 CFR 1.121 . See
 MPEP § 217 . The
 application will maintain the filing date as of the date of deposit of
 the original application papers in the USPTO. The original application
 papers (i.e., the original disclosure of the invention) will include
 only those application papers present in the USPTO on the original
 date of deposit. The two-month period is extendable under
 37 CFR 1.136 .
 

 
 

 
 

 The submission of omitted page(s) in a nonprovisional application
 and acceptance of the date of such submission as the application filing date is
 tantamount to simply filing a new application. Thus, applicants should consider
 filing a new application as an alternative to submitting a petition under
 37 CFR
 1.182 (with the petition fee under 37 CFR
 1.17(f) ) with any omitted page(s), which is a cost effective
 alternative in instances in which a nonprovisional application is deposited
 without filing fees. Likewise, in view of the relatively low filing fee for
 provisional applications, and the USPTO’s desire to minimize the processing of
 provisional applications, the USPTO will not grant petitions under
 37 CFR
 1.182 to accept omitted page(s) and accord an application
 filing date as of the date of such submission in provisional applications. The
 applicant should simply file a new completed provisional application. The mailing
 of an OPAP notice regarding omitted page(s) in a provisional application will
 permit the applicant to either: (1) promptly establish prior receipt of the
 page(s) at issue by filing of a petition under 37 CFR
 1.53(e) with the petition fee set forth in 37 CFR
 1.17(f) , along with evidence of such deposit; or (2) accept
 the application as deposited by failing to file a petition within a two-month
 non-extendable time period. Applications in which an OPAP notice regarding omitted
 items has been mailed will be retained in OPAP to await a reply to the notice.
 Failure to timely reply to the OPAP notice in a nonprovisional application will
 result in abandonment of the application. Nonprovisional applications that are
 timely completed will then be forwarded to the appropriate Technology Center for
 examination of the application. For provisional applications in which applicant
 accepts the application as deposited by failing to timely file a petition in
 response to an OPAP notice regarding omitted items, if the provisional application
 is complete under 37 CFR 1.51(c) , it will be
 held in the Office’s Image File Wrapper (IFW) system and automatically abandoned
 at the end of its pendency period. See MPEP § 601.01(a) for treatment of
 nonprovisional applications that are not complete under 37 CFR
 1.51(b) and MPEP § 601.01(b) for treatment of
 provisional applications that are not complete under 37 CFR
 1.51(c) ).
 

 II. APPLICATION NOT ENTITLED TO FILING DATE If the application does not contain
 anything that can be construed as a written description, OPAP will mail a Notice
 of Incomplete Application indicating that the application lacks the specification
 required by 35
 U.S.C. 112 . Applicant may: 
 

 
 (A) file a petition under 37 CFR 1.53(e) with the
 petition fee set forth in 37 CFR 1.17(f) ,
 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(e) must be accompanied by sufficient evidence
 ( 37 CFR
 1.181(b) ) to establish applicant’s entitlement to the
 requested filing date ( e.g., a date-stamped postcard
 receipt ( MPEP § 503 ) to establish
 prior receipt in the USPTO of the missing specification); 
 

 (B) submit the omitted specification, including at least one
 claim if the application is a nonprovisional application filed under
 35 U.S.C. 111(a) prior to December 18, 2013 or a
 design application, and accept the date of such submission as the
 application filing date. For applications filed before September 16, 2012,
 the omitted specification should be accompanied by an oath or declaration in
 compliance with pre-AIA 37 CFR 1.63 and
 pre-AIA
 37 CFR 1.64 referring to the specification being
 submitted; or 
 

 (C) submit an amendment under 37 CFR
 1.57(b) in a nonprovisional application. If a
 nonprovisional application was filed on or after September 21, 2004, and
 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, or international application that was present on the filing
 date of the application, and the specification was inadvertently omitted
 from the application and is completely contained in the prior-filed
 application, applicant may submit an amendment to include the inadvertently
 omitted specification pursuant to 37 CFR
 1.57(b) . The amendment must be accompanied by a
 petition under 37 CFR 1.53(e) along
 with the petition fee set forth in 37 CFR
 1.17(f) . See MPEP §
 217 . The amendment should be identified as an
 amendment pursuant to 37 CFR 1.57(b) and must
 comply with the requirements of 37 CFR
 1.57(b) and 37 CFR 1.121 . The
 two-month period is extendable under 37 CFR 1.136 .
 

 
 Applications in which a “Notice of Incomplete Application” has
 been mailed will be retained in OPAP to await action by the applicant since
 further action by the applicant is necessary for the application to be accorded a
 filing date. Unless applicant completes the application or files a petition under
 37 CFR
 1.53(e) with the petition fee set forth in 37 CFR
 1.17(f) , within the period set in the “Notice of Incomplete
 Application,” the application will be processed as an incomplete application under
 37 CFR
 1.53(e) .
 

 III. APPLICATION FORWARDED FOR EXAMINATION If it is discovered that an application that was forwarded to a
 Technology Center (TC) for examination was filed without all of the page(s) of the
 specification, and a Notice of Omitted Items has not been
 mailed by OPAP, the examiner should review the application to determine whether
 the application is entitled to a filing date. An application filed under
 35 U.S.C.
 111(a) prior to December 18, 2013 or a design application is
 entitled to a filing date if the application contains something that can be
 construed as a written description, at least one drawing figure (if necessary
 under 35 U.S.C.
 113 , first sentence), and at least one claim. If the
 application is not a design application and was filed under 35 U.S.C.
 111(a) on or after December 18, 2013, the application is
 entitled to a filing date if it is filed with a specification, with or without
 claims. However, claims must be filed before the application is sent to the
 TC.
 

 A. Application Entitled to a Filing Date If an application filed without all of the pages of the
 specification is entitled to a filing date, the examiner should notify
 applicant of the omission in the next Office action and require applicant to do
 one of the following:
 

 
 (A) accept the application, as filed, without all of the
 page(s) of the specification;
 

 (B) file any omitted page(s) and a petition under
 37
 CFR 1.182 with the petition fee set forth in
 37 CFR 1.17(f) ,
 requesting the date of submission of the omitted page(s) as the
 application filing date. For applications filed before September 16,
 2012, the omitted pages must be accompanied by an oath or declaration in
 compliance with pre-AIA 37 CFR 1.63 
 and pre-AIA 37 CFR 1.64 referring to the omitted
 page(s); or 
 

 (C) file a petition under 37 CFR 1.53(e) with
 the petition fee set forth in 37 CFR
 1.17(f) alleging that the page(s) indicated as
 omitted was in fact deposited with the USPTO with the application papers,
 including any and all evidence supporting the allegation. See
 MPEP § 503 . The petition
 fee will be refunded if it is determined that the page(s) was in fact
 received by the USPTO with the application papers deposited on filing.
 
 

 
 If applicant is willing to accept the application, as filed,
 without all of the page(s) of the application (item A above), an amendment of
 the specification is required to renumber the pages of the application
 consecutively and to cancel any incomplete sentences caused by the absence of
 the omitted page(s). The amendment should be submitted in response to the
 Office action.
 

 If an application was filed on or after September 21, 2004, and
 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 omitted portion of the
 specification was inadvertently omitted from the application and is completely
 contained in the prior-filed application, applicant may submit an amendment to
 include the inadvertently omitted portion of the specification pursuant to
 37 CFR 1.57(b) . The amendment should be submitted in
 response to the Office action and must comply with 37 CFR
 1.57(b) and 37 CFR 1.121 . See
 MPEP § 217 .
 

 Any petition filed in accordance with item B or C above will
 be forwarded to the Office of Petitions.
 

 B. Application NOT Entitled to a Filing Date If upon review of the application, the examiner determines that
 the application is NOT entitled to a filing date, the examiner should forward
 the application to OPAP for mailing of a “Notice of Incomplete
 Application.”
 

 

 
 601.01(e) Nonprovisional Application Filed Without at Least One Claim [R-07.2015]

 [Editor Note: This section is only applicable to nonprovisional applications
 filed prior to December 18, 2013 or to design applications. Nonprovisional
 applications, which are not design applications, filed under 35 U.S.C.
 111(a) on or after December 18, 2013 are entitled to a
 filing date even if the specification does not contain claims. If such an
 application is filed without claims, it may be completed subsequent to its filing
 date. See MPEP §
 601.01(a) , subsection II.] 

 For nonprovisional applications filed prior to December 18, 2013 or
 design applications, the applicable version of 35 U.S.C. 111(a)(2) requires that
 an application for patent include, inter alia, “a specification as
 prescribed by section 112,” and the applicable version of 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(a) provides, in
 part, that “[t]he specification shall contain a written description of the
 invention,” and 35 U.S.C. 112(b) , 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 1.51[(b)] , make clear
 the requirement that an application for a patent must include.
 . . a specification and claims. . . . The omission of any one 
 of these component parts makes a patent application incomplete and thus not
 entitled to a filing date.
 

 
 728 F.2d 1423, 1437, 221 USPQ 97, 105 (Fed. Cir. 1984)(citing
 Gearon v. United States, 121 F. Supp 652, 654, 101 USPQ 460,
 461 (Ct. Cl. 1954), cert. denied, 348 U.S. 942, 104 USPQ 409
 (1955))(emphasis in the original).
 

 Therefore, in an application filed under 35 U.S.C.
 111(a) prior to December 18, 2013 and in a design application,
 a claim is a statutory requirement for according a filing date to the application.
 35 U.S.C.
 171 makes 35 U.S.C. 112 applicable to
 design applications. 35 U.S.C. 162 specifically
 requires the specification in a plant patent application to contain a claim, but a
 claim is not required for receiving a filing date for plant patent applications filed
 on or after December 18, 2013. In addition, 35 U.S.C. 111(b)(2) provides that
 “[a] claim, as required by subsections (b) through (e) of section 112, shall not be
 required in a provisional application.” Thus, only design applications and
 nonprovisional applications filed prior to December 18, 2013 that are filed without
 at least one claim are incomplete and not entitled to a filing date.
 

 If a nonprovisional application filed prior to December 18, 2013 or a
 design application does not contain at least one claim, a “Notice of Incomplete
 Application” will be mailed to the applicant(s) indicating that no filing date has
 been granted and setting a period for submitting a claim. The filing date will be the
 date of receipt of at least one claim. See In re Mattson, 208 USPQ
 168 (Comm’r Pat. 1980). In applications filed before September 16, 2012, an oath or
 declaration in compliance with pre-AIA 37 CFR 1.63 and
 pre-AIA 37 CFR
 1.64 referring to the claim being submitted is also
 required.
 

 If a nonprovisional application filed prior to December 18, 2013 or a
 design application is accompanied by a preliminary amendment which cancels all claims
 without presenting any new or substitute claims, the Office will disapprove such an
 amendment. See 37
 CFR 1.115(b)(1) and Exxon Corp. v. Phillips Petroleum
 Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001). Thus, the
 application will not be denied a filing date merely because such a preliminary
 amendment was submitted on filing. For fee calculation purposes, the Office will
 treat such an application as containing only a single claim.
 

 As 37 CFR 1.53(c)(2) permits the conversion of an application
 filed under 35
 U.S.C. 111(a) to an application under 35 U.S.C.
 111(b) , an applicant in an application, other than for a design
 patent, filed under 35 U.S.C. 111(a) on or after June 8, 1995, without at least
 one claim has the alternative of filing a petition under 37 CFR
 1.53(c)(2) to convert such application into an application
 under 35 U.S.C.
 111(b) , which does not require a claim to be entitled to its
 date of deposit as a filing date. Such a petition, however, must be filed prior to
 the expiration of 12 months after the date of deposit of the application under
 35 U.S.C.
 111(a) , and comply with the other requirements of
 37 CFR
 1.53(c)(2) . See MPEP § 601.01(c) . For nonprovisional
 applications filed under 35 U.S.C. 111(a) on or after
 December 18, 2013, there is no need to request conversion to a provisional
 application because such applications do not require presentation of at least one
 claim to obtain a filing date.
 

 The treatment of an application subsequent to the mailing of a
 “Notice of Incomplete Application” is discussed in MPEP §
 601.01(d) .
 

 

 
 601.01(f) Applications Filed Without Drawings [R-10.2019]

 [Editor Note: This section is only applicable to applications filed prior to
 December 18, 2013 or to design applications. Applications, which are not design
 applications, filed under 35 U.S.C. 111(a) or (b) on or
 after December 18, 2013 are entitled to a filing date even if the application does
 not contain drawings. If such an application is filed without drawings, it may be
 completed subsequent to its filing date. See 37 CFR
 1.53(e) and MPEP § 601.01(g) .] 

 35 U.S.C.
 111(a)(2)(B) and 35 U.S.C. 111(b)(1)(B) each
 provide, in part, that an “application shall include . . . a drawing as prescribed by
 section 113.” 35
 U.S.C. 113 (first sentence) in turn provides that an “applicant
 shall furnish a drawing where necessary for the understanding of the subject matter
 sought to be patented.” For applications filed prior to December 18, 2013,
 35 U.S.C.
 111(a)(4) and 35 U.S.C. 111(b)(4) each provide,
 in part, that the “filing date. . . shall be the date on which . . . any required
 drawing are received in the Patent and Trademark Office.” Therefore, design
 applications and applications filed under 35 U.S.C. 111(a) or (b) prior to
 December 18, 2013 must have any required drawing, if it is necessary for the
 understanding of the invention, in order to receive a filing date. For applications
 other than design applications filed on or after December 18, 2013, although drawings
 are not required in order to receive a filing date, drawings should be submitted on
 filing if necessary for the understanding of the invention because no amendment may
 introduce new matter into the disclosure of an application after its filing date.
 

 Applications filed without drawings are initially inspected to
 determine whether a drawing is referred to in the specification, and if not, whether
 a drawing is necessary for the understanding of the invention. 35 U.S.C. 113 
 (first sentence).
 

 It has been USPTO practice to treat an application that contains at
 least one process or method claim as an application for which a drawing is not
 necessary for an understanding of the invention under 35 U.S.C. 113 
 (first sentence). The same practice has been followed in composition applications.
 Other situations in which drawings are usually not considered necessary for the
 understanding of the invention under 35 U.S.C. 113 (first sentence)
 are:
 

 
 (A) Coated articles or products: where the invention resides
 solely in coating or impregnating a conventional sheet
 ( e.g., paper or cloth, or an article of known and
 conventional character with a particular composition), unless significant
 details of structure or arrangement are involved in the article claims;
 

 (B) Articles made from a particular material or 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;
 

 (C) 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
 

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

 (2) Packaged sutures wherein the structure and arrangement of
 the package are conventional and the only distinguishing feature is the
 use of a particular material.
 

 
 

 
 A nonprovisional application filed prior to December 18, 2013 or a
 design application having at least one claim, or a provisional application having at
 least some disclosure, directed to the subject matter discussed above for which a
 drawing is usually not considered essential for a filing date,
 not describing drawing figures in the specification, and
 filed without drawings will simply be processed, so long as the application contains
 something that can be construed as a written description. A nonprovisional
 application filed prior to December 18, 2013 or a design 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 in
 MPEP §
 601.01(g) , so long as the application contains something
 that can be construed as a written description. In a situation in which the
 appropriate Technology Center (TC) determines that drawings are necessary under
 35 U.S.C.
 113 (first sentence) the filing date issue will be reconsidered
 by the USPTO in nonprovisional applications filed prior to December 18, 2013 or in
 design applications. The application will be returned to the Office of Patent
 Application Processing (OPAP) for mailing of a “Notice of Incomplete
 Application.”
 

 If a nonprovisional application filed prior to December 18, 2013 or a
 design application does not have at least one claim directed to the subject matter
 discussed above for which a drawing is usually not considered essential for a filing
 date, or a provisional application filed prior to December 18, 2013 does not have at
 least some disclosure directed to the subject matter discussed above for which a
 drawing is usually not considered essential for a filing date, and is filed without
 drawings, OPAP will mail a “Notice of Incomplete Application” indicating that the
 application lacks drawings and that 35 U.S.C. 113 (first sentence)
 requires a drawing where necessary for the understanding of the subject matter sought
 to be patented.
 

 Applicant may file a petition under 37 CFR 1.53(e) 
 with the petition fee set forth in 37 CFR 1.17(f) , asserting that
 (A) the drawing(s) at issue was submitted, or (B) the drawing(s) is not necessary
 under 35 U.S.C.
 113 (first sentence) for a filing date. The petition must be
 accompanied by sufficient evidence to establish applicant’s entitlement to the
 requested filing date (e.g., a date-stamped postcard receipt ( MPEP §
 503 ) to establish prior receipt in the USPTO of the
 drawing(s) at issue). Alternatively, applicant in a nonprovisional application may
 submit drawing(s) and accept the date of such submission as the application filing
 date. For applications filed before September 16, 2012, such drawings must be
 accompanied by an oath or declaration in compliance with pre-AIA 37 CFR 1.63
 and pre-AIA 37 CFR 1.64 referring to
 the drawing(s) being submitted.
 

 If the drawing(s) was inadvertently omitted from a nonprovisional
 application filed on or after September 21, 2004, and 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 application, or international design application that
 was present on the filing date of the application, and the inadvertently omitted
 drawing(s) is completely contained in the prior-filed application, the applicant may
 submit the omitted drawing(s) by way of an amendment in compliance with
 37 CFR
 1.57(b) . The amendment must be by way of a petition under
 37 CFR
 1.53(e) accompanied by the petition fee set forth in
 37
 CFR 1.17(f) . See MPEP §
 217 .
 

 In design applications, OPAP will mail a “Notice of Incomplete
 Application” indicating that the application lacks the drawings required under
 35 U.S.C.
 113 (first sentence). The applicant may: (A) promptly file a
 petition under 37
 CFR 1.53(e) with the petition fee set forth in
 37 CFR 1.17(f) , asserting that the missing drawing(s) was
 submitted; or (B) promptly submit drawing(s) and accept the date of such submission
 as the application filing date. For applications filed before September 16, 2012,
 such drawing(s) must be accompanied by an oath or declaration in compliance with
 pre-AIA 37 CFR
 1.63 and pre-AIA 37 CFR 1.64 . Applicant
 may also be able to file an amendment by way of a petition under 37 CFR
 1.53(e) as provided for in 37 CFR
 1.57(b)(3) as discussed above. 37 CFR
 1.153(a) provides that the claim in a design application “shall
 be in formal terms to the ornamental design for the article (specifying name) as
 shown, or as shown and described.” As such, petitions under 37 CFR 1.53(e) 
 asserting that drawings are unnecessary under 35 U.S.C. 113 (first sentence)
 for a filing date in a design application will not be found
 persuasive.
 

 The treatment of an application subsequent to the mailing of a
 “Notice of Incomplete Application” is discussed in MPEP §
 601.01(d) .
 

 

 
 601.01(g) Applications Filed Without All Figures of
 Drawings [R-07.2022]
 
 I. REVIEW BY THE OFFICE OF PATENT APPLICATION PROCESSING The Office of Patent Application Processing (OPAP) reviews
 application papers to determine whether all of the figures of the drawings that
 are mentioned in the specification are present in the application. If an
 application filed under 35 U.S.C. 111 prior to
 December 18, 2013, or a design application, is filed without all of the drawing
 figure(s) referred to in the specification, and the application contains something
 that can be construed as a written description, at least one drawing, if necessary
 under 35 U.S.C.
 113 (first sentence), and, in a nonprovisional application,
 at least one claim, an OPAP notice (e.g., a “Notice of Omitted Item(s)”) will be
 sent indicating that the application papers so deposited have been accorded a
 filing date, but are lacking some of the figures of drawings described in the
 specification. For an application, which is not a design application, filed under
 37 CFR
 1.53(b) or (c) on or after December 18, 2013, if the
 application is filed without all of the drawings, but contains something that can
 be construed as a specification, with or without claims, an OPAP notice (e.g., a
 “Notice of Omitted Items”) will be sent indicating that the application papers so
 deposited have been accorded a filing date, but are lacking some drawings.
 

 The procedure for handling nonprovisional
 applications having omitted items was revised in “Change in Procedure for Handling
 Nonprovisional Applications Having Omitted Items,” 1315 OG 103 (February 20,
 2007).
 

 Under the revised procedure, the mailing of an OPAP notice
 regarding a missing drawing figure(s) in a nonprovisional application will permit
 the applicant to:
 

 
 (A) promptly establish prior receipt in the USPTO of the
 drawing(s) at issue. An applicant asserting that the drawing(s) was in fact
 received by the USPTO with the application papers must, within two months
 from the date of the OPAP notice, file a petition under 37 CFR
 1.53(e) with the petition fee set forth in
 37 CFR1.17(f) , along
 with evidence of such deposit. The petition fee will be refunded if it is
 determined that the drawing(s) was in fact received by the USPTO with the
 application papers deposited on filing. The two-month period is extendable
 under 37
 CFR 1.136 ;
 

 (B) promptly submit the omitted drawing(s) in a nonprovisional
 application and accept the date of such submission as the application filing
 date. An applicant desiring to submit the omitted drawing(s) in a
 nonprovisional application and accept the date of such submission as the
 application filing date must, within two months from the date of the OPAP
 notice, file any omitted drawing(s) and a petition under 37 CFR
 1.182 with the petition fee set forth in
 37 CFR 1.17(f) ,
 requesting the later filing date. For applications filed before September
 16, 2012, the omitted drawings must be filed with an oath or declaration in
 compliance with pre-AIA 37 CFR 1.63 and
 pre-AIA
 37 CFR 1.64 referring to such drawing(s). The
 two-month period is extendable under 37 CFR 1.136 ; or
 

 (C) accept the application as deposited in the USPTO by filing
 an appropriate amendment. Applicant may accept the application as deposited
 in the USPTO by either:
 
 (1) filing an amendment including replacement drawing
 sheets in compliance with 37 CFR 1.121(d) to
 renumber the drawing figures consecutively (if necessary), and a
 substitute specification (excluding claims) that amends the
 specification to cancel any references to any omitted drawing(s) and
 corrects the references in the specification to the drawing figures to
 correspond with any relabeled drawing figures, in compliance with
 37 CFR 1.121(b)(3) and 1.125 , without adding the subject matter that
 was in the omitted drawing(s) and without adding any new matter (see
 35 U.S.C. 132(a) ). The application will
 maintain the filing date as of the date of deposit of the original
 application papers in the USPTO. The original application papers
 (i.e., the original disclosure of the invention) will include only
 those application papers present in the USPTO on the original date of
 deposit. 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, an amendment with replacement sheets of
 drawings in compliance with 37 CFR 1.121(d) is
 required in a nonprovisional application to renumber the drawing
 figures consecutively, if necessary, and amendment of the
 specification is required to correct the references to the drawing
 figures to correspond with any relabeled drawing figures, both in the
 brief and detailed descriptions of the drawings, or
 

 (2) filing an amendment to add the missing figure(s) by
 relying on an incorporation by reference under 37 CFR
 1.57(b) or other portions of the original
 disclosure, without adding any new matter (see 35 U.S.C.
 132(a) ). Applicant is required to submit new and
 replacement drawing sheets in compliance with 37 CFR
 1.121(d) to add the missing figure(s). If an
 application was filed on or after September 21, 2004, and 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 application, or international design application, that
 was present on the filing date of the application, and the omitted
 portion of the drawings was inadvertently omitted from the application
 and is completely contained in the prior-filed application, applicant
 may submit an amendment to include the inadvertently omitted portion
 of the drawings pursuant to 37 CFR
 1.57(b) . The amendment should be identified as
 an amendment pursuant to 37 CFR 1.57(b) and
 must comply with the requirements of 37 CFR
 1.57(b) and 37 CFR 1.121 . See
 MPEP § 217 . The
 application will maintain the filing date as of the date of deposit of
 the original application papers in the USPTO. The original application
 papers (i.e., the original disclosure of the invention) will include
 only those application papers present in the USPTO on the original
 date of deposit.
 

 
 

 
 The submission of omitted 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(f) ) with any omitted drawing(s), which is a cost effective
 alternative in instances in which a nonprovisional application is deposited without
 filing fees. Likewise, in view of the relatively low filing fee for provisional
 applications, and the USPTO’s desire to minimize the processing of provisional
 applications, the USPTO will not grant petitions under 37 CFR 1.182 to
 accept omitted drawing(s) and accord an application filing date as of the date of
 such submission in provisional applications. The applicant should simply file a new
 completed provisional application. The mailing of an OPAP notice regarding missing
 drawing figure(s) in a provisional application will permit the applicant to either:
 (1) promptly establish prior receipt of the drawing(s) at issue by filing a petition
 under 37 CFR
 1.53(e) with the petition fee set forth in 37 CFR 1.17(f) ,
 along with evidence of such deposit; or (2) accept the application as deposited by
 failing to file a petition within a two-month non-extendable time period. 
 

 Applications in which an OPAP notice regarding omitted items has
 been mailed will be retained in OPAP to await a reply to the notice. Failure to
 timely reply to the OPAP notice in a nonprovisional application will result in
 abandonment of the application. Nonprovisional applications that are timely completed
 will then be forwarded to the appropriate Technology Center for examination of the
 application. For provisional applications in which applicant accepts the application
 as deposited by failing to timely file a petition in response to an OPAP notice
 regarding omitted items, if the provisional application is complete under
 37 CFR
 1.51(c) , it will be held in the Office’s Image File Wrapper
 (IFW) system and automatically abandoned at the end of its pendency period. See
 MPEP §
 601.01(a) for treatment of nonprovisional applications that
 are not complete under 37 CFR 1.51(b) and
 MPEP §
 601.01(b) for treatment of provisional applications that
 are not complete under 37 CFR 1.51(c) .
 

 The treatment of an application subsequent to the mailing of a
 “Notice of Omitted Item(s)” is discussed in MPEP § 601.01(d) .
 

 Applications are often filed with drawings with several views of the
 invention where the views are labeled using a number-letter combination, e.g., Fig.
 1A, Fig. 1B, and Fig. 1C. If a figure which is referred to in the specification by a
 particular number cannot be located among the drawings, and the drawings include at
 least one figure labeled with that particular number in combination with a letter,
 correction will be required. For example, if the drawings show Figures 1A, 1B, and 1C
 and the brief description of the drawings refers only to Figure 1, this is an error
 in the specification which must be corrected. 
 

 II. REVIEW BY EXAMINER If it is discovered that an application that was forwarded for
 examination was filed without all of the drawing figure(s) referred to in the
 specification, and a Notice of Omitted Items or other OPAP notice regarding
 omitted items has not been mailed by OPAP, the examiner
 should review the application to determine whether the application is entitled to
 a filing date if the application was filed under 35 U.S.C.
 111(a) prior to December 18, 2013 or is a design
 application. An application filed under 35 U.S.C. 111(a) prior to
 December 18, 2013 or a design application is entitled to a filing date if the
 application contains something that can be construed as a written description, at
 least one drawing figure (if necessary under 35 U.S.C. 113 , first
 sentence), and at least one claim. If the application is not a design application
 and was filed under 35 U.S.C. 111(a) on or after
 December 18, 2013, the application is entitled to a filing date if it is filed
 with a specification, with or without drawings.
 

 A. Application Entitled to a Filing Date If the application is entitled to a filing date, the examiner
 should notify applicant of the omission in the next Office action and require
 applicant to do one of the following:
 

 
 (A) accept the application, as filed, without all of the
 drawing figure(s) referred to in the specification; 
 

 (B) file any omitted drawing figure(s) and a petition under
 37
 CFR 1.182 with the petition fee set forth in
 37 CFR 1.17(f) ,
 requesting the date of submission of the omitted drawing figure(s) as the
 application filing date. For applications filed before September 16,
 2012, the omitted drawing(s) must be filed with an oath or declaration in
 compliance with pre-AIA 37 CFR 1.63 
 and pre-AIA 37 CFR 1.64 referring to the omitted
 drawing figure(s); or 
 

 (C) file a petition under 37 CFR 1.53(e) with
 the petition fee set forth in 37 CFR
 1.17(f) alleging that the drawing figure(s)
 indicated as omitted was in fact deposited with the USPTO with the
 application papers, including any and all evidence supporting the
 allegation. See MPEP § 503 . The petition
 fee will be refunded if it is determined that the drawing figure(s) was
 in fact received by the USPTO with the application papers deposited on
 filing. 
 

 
 If applicant is willing to accept the application, as filed,
 without all of the drawing figure(s) referred to in the application (item A
 above), applicant is required to submit (1) an amendment to the specification
 canceling all references to the omitted drawing figure(s) including any
 reference numerals shown only in the omitted drawing figure(s), (2) an
 amendment with replacement sheets of drawings in compliance with
 37 CFR
 1.121(d) renumbering the drawing figure(s) submitted on
 filing consecutively, and (3) a further amendment to the specification
 correcting references to drawing figure(s) to correspond with the relabeled
 drawing figure(s), both in the brief and detailed descriptions of the drawings.
 The amendment should be submitted in response to the Office action.
 

 If an 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 application, or
 international design application, that was present on the filing date of the
 application, and the omitted portion of the drawing(s) was inadvertently
 omitted from the application and is completely contained in the prior-filed
 application, applicant may submit an amendment to include the inadvertently
 omitted portion of the drawing(s) pursuant to 37 CFR
 1.57(b) . The amendment should be submitted in response to
 the Office action and must comply with 37 CFR
 1.57(b) and 37 CFR 1.121 . See
 MPEP § 217 .
 

 Any petition filed in accordance with item (B) or (C) above
 will be forwarded to the Office of Petitions.
 

 B. Application NOT Entitled to a Filing Date If upon review of the application, the examiner determines that
 the application filed under 35 U.S.C. 111(a) prior to
 December 18, 2013 or a design application is NOT entitled to a filing date
 because the application does not contain any drawing figure, and at least one
 drawing figure is necessary under 35 U.S.C 113 , first
 sentence, the examiner should forward the application to OPAP for mailing of a
 “Notice of Incomplete Application.”
 

 

 

 
 601.02 Power of Attorney [R-07.2015]

 The attorney’s or agent’s full mailing address (including ZIP Code) must
 be given in every power of attorney. The telephone and fax numbers of the attorney or
 agent should also be included in the power of attorney. The prompt delivery of
 communications will thereby be facilitated.
 

 See MPEP § 402.02(a) for detailed
 information and relevant forms pertaining to appointment of a power of attorney in
 applications filed on or after September 16, 2012. See MPEP §
 402.02(b) for detailed information and relevant forms
 pertaining to appointment of a power of attorney in applications filed before September
 16, 2012.
 

 

 
 601.03 Correspondence Address [R-11.2013]

 An application must specify a correspondence address to
 which the Office will send notices, letters, and other communications relating to an
 application. The Office should be promptly notified of any change in correspondence
 address. The required notification of change of correspondence address need take no
 particular form. However, it should be provided in a manner calling attention to the
 fact that a change of address is being made. Thus, the mere inclusion, in a paper being
 filed for another purpose, of an address which is different from the previously provided
 correspondence address, without mention of the fact that an address change is being made
 would not ordinarily be recognized or deemed as instructions to change the
 correspondence address on the file record.
 

 See MPEP § 601.03(a) for information
 specific to correspondence address changes in an application filed on or after September
 16, 2012. See MPEP § 601.03(b) for information
 specific to correspondence address changes in an application filed before September 16,
 2012. 
 

 See MPEP § 711.03(c) for treatment of
 petitions to revive applications abandoned as a consequence of failure to timely receive
 an Office action at the correspondence address of record (e.g., because the Office
 action was mailed to the incorrect correspondence address).
 

 Note that the obligation (see 37 CFR 11.11 ) of a
 registered attorney or agent to notify the Director of the Office of Enrollment and
 Discipline of any change of his or her address is separate from the obligation to file a
 notice of change of address in individual applications. Unless the correspondence
 address is designated as the address associated with a Customer Number, a separate
 notification must be filed in each application for which a person is intended to receive
 communications from the Office. See MPEP § 403 for Customer Number
 Practice. In those instances where a change in the correspondence address of a
 registered attorney or agent is necessary in a plurality of applications, the
 notification filed in each application may be a reproduction of a properly executed,
 original notification. The original notice may either be sent to the Office of
 Enrollment and Discipline as notification of the change of address ( 37 CFR 11.11 ), or
 may be retained by applicant.
 

 
 601.03(a) Change of Correspondence Address in
 Applications Filed On or After September 16, 2012 [R-01.2024]
 

 [Editor Note: See MPEP § 601.03(b) for change of
 correspondence address in applications filed before September 16, 2012.] 

 
 37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings,
 and other proceedings. 

 
 (a) Correspondence address and daytime telephone number. When
 filing an application, a correspondence address must be set forth in either
 an application data sheet ( § 1.76 ), or elsewhere,
 in a clearly identifiable manner, in any paper submitted with an application
 filing. If no correspondence address is specified, the Office may treat the
 mailing address of the first named inventor (if provided, see
 §§
 1.76(b)(1) and 37 CFR
 1.63(b)(2) ) as the correspondence address. The Office
 will direct, or otherwise make available, all notices, official letters, and
 other communications relating to the application to the person associated
 with the correspondence address. For correspondence submitted via the USPTO
 patent electronic filing system, however, an electronic acknowledgment
 receipt will be sent to the submitter. The Office will generally not engage
 in double correspondence with an applicant and a patent practitioner, or
 with more than one patent practitioner except as deemed necessary by the
 Director. If more than one correspondence address is specified, the Office
 will select one of the specified addresses for use as the correspondence
 address and, if given, may select the address associated with a Customer
 Number over a typed correspondence address. For the party to whom
 correspondence is to be addressed, a daytime telephone number should be
 supplied in a clearly identifiable manner and may be changed by any party
 who may change the correspondence address. The correspondence address may be
 changed by the parties set forth in paragraph (b)(1) or (b)(3) of this
 section. Prior to the appointment of any power of attorney under
 §
 1.32(b) , the correspondence address may also be
 changed by any patent practitioner named in the application transmittal
 papers who acts in a representative capacity under the provisions of
 §
 1.34 .
 

 (b) Amendments and other papers. Amendments and
 other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or
 (c)(2)(iv) , filed in the application must be signed
 by:
 
 (1) A patent practitioner of record;

 (2) A patent practitioner not of record who
 acts in a representative capacity under the provisions of
 §
 1.34 ; or
 

 (3) The applicant ( §
 1.42 ). Unless otherwise specified, all papers
 submitted on behalf of a juristic entity must be signed by a patent
 practitioner.
 

 
 

 
 *****

 
 (e) A change of address filed in a patent
 application or patent does not change the address for a patent practitioner
 in the roster of patent attorneys and agents. See §
 11.11 of this title.
 

 (f) Where application papers from a prior
 application are used in a continuing application and the correspondence
 address was changed during the prosecution of the prior application, an
 application data sheet or separate paper identifying the correspondence
 address to be used for the continuing application must be submitted.
 Otherwise, the Office may not recognize the change of correspondence address
 effected during the prosecution of the prior application.
 

 (g) A patent practitioner acting in a
 representative capacity whose correspondence address is the correspondence
 address of record in an application may change the correspondence address
 after the patent has issued, provided that the change of correspondence
 address is accompanied by a statement that notice has been given to the
 patentee or owner.
 

 
 

 37 CFR
 1.33(a) provides that the application must specify a
 correspondence address to which the Office will send notice, letters, and other
 communications relating to an application. The correspondence address must either be
 in an application data sheet ( 37 CFR 1.76 ) or in a clearly
 identifiable manner elsewhere in any papers submitted with the application filing. 
 

 Applicants should provide clear instructions regarding
 the correspondence address. If more than one correspondence address is specified,
 whether in a single paper or in multiple papers, the Office will select one of the
 specified addresses for use as the correspondence address and, if given, may select
 the address associated with a Customer Number over a typed correspondence address. If
 an applicant provides multiple correspondence addresses in a single paper (e.g.,
 providing both a typed correspondence address and a Customer Number in a single
 paper) or multiple papers (e.g., an oath or declaration, a transmittal letter, and a
 preliminary amendment that each includes a different correspondence address), and the
 Office does not select the correspondence address actually desired by applicant, the
 Office will not remail papers to the desired address. See MPEP § 707.13 for
 remailing of returned Office correspondence. Note that the hierarchy provided in
 37 CFR
 1.76(d) for inconsistencies between an application data sheet
 and other documents governs. Accordingly, if the ADS includes a typed correspondence
 address, and the declaration submitted at the same time gives a different address
 (e.g., the address associated with a Customer Number) as the correspondence address,
 the Office will use the typed correspondence address as included on the ADS. After
 the correspondence address has been entered according to the above procedure, it will
 only be changed pursuant to 37 CFR 1.33(a) .
 

 For applications submitted via the USPTO patent
 electronic filing system, although an electronic acknowledgment receipt will be sent
 to the submitter, a correspondence address must still be set forth in either an
 application data sheet ( 37 CFR 1.76 ) or in a clearly
 identifiable manner elsewhere in any papers submitted with the application
 filing.
 

 The submission of a daytime telephone number of the
 party to whom correspondence is to be addressed is requested pursuant to
 37 CFR
 1.33(a) . While business is to be conducted on the written
 record ( 37 CFR
 1.2 ), a daytime telephone number is useful in initiating
 contact that could later be reduced to writing. Any party who may change the
 correspondence address may also change the telephone number.
 

 37 CFR
 1.33(a) specifies that the correspondence address may be
 changed by the parties set forth in 37 CFR 1.33(b)(1) (a patent
 practitioner of record) or 37 CFR 1.33(b)(3) (the applicant
 under 37 CFR
 1.42 ). 37 CFR 1.33(a) also provides that
 prior to the appointment of any power of attorney under 37 CFR
 1.32(b) , the correspondence address may be changed by any
 patent practitioner named in the application transmittal papers who acts in a
 representative capacity under the provisions of 37 CFR 1.34 .
 

 Prior to the appointment of any power of attorney, if a
 patent practitioner (i.e., registered attorney or agent) filed the application, any
 other patent practitioners named in the transmittal papers may also change the
 correspondence address. A patent practitioner named in a letterhead would not be
 considered as being named in the transmittal papers for purposes of changing the
 correspondence address. A clear identification of the individual as a representative
 is required. If an application is filed by a company to whom the invention has been
 assigned or to whom there is an obligation to assign the invention, a person (other
 than a patent practitioner) who has the authority to act on behalf of the company
 may not change the correspondence address, as all papers signed on
 behalf of a juristic entity must be signed by a patent practitioner. 
 

 The correspondence address will not be changed by filing
 a paper (such as an application data sheet) which includes a correspondence address
 which is different from the correspondence address of record if the paper does not
 clearly identify that an address change is being made.
 

 37 CFR
 1.33(e) provides that a change of address filed in a patent
 application or patent does not change the address for a patent practitioner in the
 roster of patent attorneys and agents. See 37 CFR 11.11 . 
 

 37 CFR
 1.33(f) provides that where application papers (e.g., the
 inventor’s oath or declaration) from a prior application are used in a continuing
 application and the correspondence address was changed during the prosecution of the
 prior application, an application data sheet or separate paper identifying the
 correspondence address to be used for the continuing application must be submitted.
 If not submitted, the Office may not recognize the change of correspondence address
 effected during the prosecution of the prior application and correspondence may be
 mailed to a previously designated correspondence address.
 

 37 CFR
 1.33(g) provides that a practitioner acting in a representative
 capacity whose correspondence address is the correspondence address of record in an
 application may change the correspondence address after the patent has issued,
 provided that the change of correspondence address is accompanied by a statement that
 notice has been given to the patentee or owner. 37 CFR
 1.33(g) provides a means for practitioners acting in a
 representative capacity in an application to effect a change in correspondence
 address after the patent has granted but does not provide authority to a practitioner
 acting under 37 CFR
 1.34 to change the correspondence address in an application.
 See 37 CFR
 1.33(a) .
 

 

 

 

 

 

 
 601.03(b) Change of Correspondence Address in
 Applications Filed Before September 16, 2012 [R-10.2019]
 

 [Editor Note: See MPEP § 601.03(a) for change of
 correspondence address in applications filed on or after September 16,
 2012.] 

 
 37 CFR 1.33 (pre-AIA) Correspondence respecting patent applications, reexamination proceedings,
 and other proceedings. 

 
 (a) Correspondence address and daytime telephone number. When filing an application, a correspondence address must be set
 forth in either an application data sheet ( §
 1.76 ), or elsewhere, in a clearly identifiable manner, in
 any paper submitted with an application filing. If no correspondence address
 is specified, the Office may treat the mailing address of the first named
 inventor (if provided, see §§ 1.76(b)(1) and
 1.63(c)(2) ) as the correspondence address. The Office
 will direct, or otherwise make available, all notices, official letters, and
 other communications relating to the application to the person associated
 with the correspondence address. For correspondence submitted via the
 Office’s electronic filing system, however, an electronic acknowledgment
 receipt will be sent to the submitter. The Office will generally not engage
 in double correspondence with an applicant and a patent practitioner, or
 with more than one patent practitioner except as deemed necessary by the
 Director. If more than one correspondence address is specified in a single
 document, the Office will select one of the specified addresses for use as
 the correspondence address and, if given, will select the address associated
 with a Customer Number over a typed correspondence address. For the party to
 whom correspondence is to be addressed, a daytime telephone number should be
 supplied in a clearly identifiable manner and may be changed by any party
 who may change the correspondence address. The correspondence address may be
 changed as follows:
 
 (1) Prior to filing of § 1.63 oath or declaration by any of the inventors. If a § 1.63 oath or
 declaration has not been filed by any of the inventors, the
 correspondence address may be changed by the party who filed the
 application. If the application was filed by a patent practitioner,
 any other patent practitioner named in the transmittal papers may also
 change the correspondence address. Thus, the inventor(s), any patent
 practitioner named in the transmittal papers accompanying the original
 application, or a party that will be the assignee who filed the
 application, may change the correspondence address in that application
 under this paragraph.
 

 (2) Where a § 1.63 oath or
 declaration has been filed by any of the inventors. If a
 §
 1.63 oath or declaration has been filed, or is
 filed concurrent with the filing of an application, by any of the
 inventors, the correspondence address may be changed by the parties
 set forth in paragraph (b) of this section, except for paragraph
 (b)(2).
 

 
 

 
 *****

 

 Pre-AIA 37 CFR
 1.33(a) provides that the application must specify a
 correspondence address to which the Office will send notice, letters, and other
 communications relating to an application. The correspondence address must either be
 in an application data sheet ( pre-AIA 37 CFR 1.76 ) or in a
 clearly identifiable manner elsewhere in any papers submitted with the application
 filing. If more than one correspondence address is specified in a single document,
 the Office will select one of the specified addresses for use as the correspondence
 address and, if given, will select the address associated with a Customer Number over
 a typed correspondence address. Additionally, applicants will often specify the
 correspondence address in more than one paper that is filed with an application, and
 the address given in the different places sometimes conflicts. Where the applicant
 specifically directs the Office to use non-matching correspondence addresses in more
 than one paper, priority will be accorded to the correspondence address specified in
 the following order: (A) application data sheet (ADS); (B) application transmittal;
 (C) oath or declaration (unless power of attorney is more current); and (D) power of
 attorney. Accordingly, if the ADS includes a typed correspondence address, and the
 declaration gives a different address (i.e., the address associated with a Customer
 Number) as the correspondence address, the Office will use the typed correspondence
 address as included on the ADS. In the experience of the Office, the ADS is the most
 recently created document and tends to have the most current address. After the
 correspondence address has been entered according to the above procedure, it will
 only be changed pursuant to pre-AIA 37 CFR 1.33(a)(1) .
 

 The submission of a daytime telephone number of the party to whom
 correspondence is to be addressed is requested pursuant to pre-AIA 37 CFR
 1.33(a) . While business is to be conducted on the written
 record ( 37 CFR
 1.2 ), a daytime telephone number is useful in initiating
 contact that could later be reduced to writing. Any party who may change the
 correspondence address may also change the telephone number.
 

 Pre-AIA 37 CFR
 1.33(a)(1) provides that the party filing the application and
 setting forth a correspondence address may later change the correspondence address
 provided that an executed oath or declaration under pre-AIA 37 CFR
 1.63 by any of the inventors has not 
 been filed. If a patent practitioner (i.e., registered attorney or agent) filed the
 application, any other patent practitioners named in the transmittal papers may also
 change the correspondence address. A patent practitioner named in a letterhead would
 not be considered as being named in the transmittal papers for purposes of changing
 the correspondence address. A clear identification of the individual as a
 representative is required. If an application is filed by a company to whom the
 invention has been assigned or to whom there is an obligation to assign the
 invention, a person who has the authority to act on behalf of the company may change
 the correspondence address. Thus, the inventor(s), any patent practitioner named in
 the transmittal papers accompanying the original application, or a party that will be
 the assignee who filed the application, may change the correspondence address
 pursuant to pre-AIA
 37 CFR 1.33(a)(1) . The filing of an executed oath or
 declaration that does not include a correspondence address does not affect any
 correspondence address previously established on filing of the application, or
 changed pursuant to pre-AIA 37 CFR 1.33(a)(1) .
 

 Where a correspondence address has been established on filing of the
 application or changed pursuant to pre-AIA 37 CFR 1.33(a)(1) (prior
 to the filing of an executed oath or declaration under pre-AIA 37 CFR
 1.63 by any of the inventors), that correspondence address
 remains in effect upon filing of an executed oath or declaration under
 pre-AIA 37 CFR
 1.63 and can only be subsequently changed pursuant to
 pre-AIA 37 CFR
 1.33(a)(2) . Under pre-AIA 37 CFR 1.33(a)(2) , where
 an executed oath or declaration under pre-AIA 37 CFR 1.63 has been
 filed by any of the inventors, the correspondence address may be changed by (A) a
 patent practitioner of record, (B) an assignee as provided for under
 pre-AIA 37 CFR
 3.71(b), or (C) all of the applicants ( pre-AIA 37 CFR
 1.41(b) ) for patent, unless there is an assignee of the entire
 interest and such assignee has taken action in the application in accordance with
 pre-AIA 37 CFR
 3.71 . See pre-AIA 37 CFR 1.33(a)(2) .
 

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

 

 

 

 

 

 

 
 601.04 National Stage Requirements of the United States as a Designated
 Office [R-08.2012]
 

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

 

 
 601.05 Bibliographic Information - Application Data Sheet
 (ADS) [R-01.2024]
 

 An application data sheet (ADS) is a sheet or set of sheets containing
 bibliographic data, which is arranged in a format specified by the Office. An ADS must
 comply with the requirements of 37 CFR 1.76 , and may be submitted in
 a provisional application under 35 U.S.C. 111(b) , a nonprovisional
 application under 35 U.S.C. 111(a) , a nonprovisional international design
 application, or a national stage application under 35 U.S.C. 371 . See
 MPEP §
 601.05(a) for requirements for an ADS that are specific to
 applications filed on or after September 16, 2012. See MPEP §
 601.05(b) for requirements for an ADS that are specific to
 applications filed prior to September 16, 2012. 
 

 When an application data sheet is provided in a patent
 application, the application data sheet becomes part of the application and must comply
 with 37 CFR
 1.52 . While the use of an application data sheet is not always
 required (see MPEP §§ 601.05(a) and 
 601.05(b) ), the Office prefers its use in all applications to
 help facilitate the electronic capturing of important data. When an ADS is optional, the
 data that is suggested to be supplied by way of an application data sheet can also be
 provided elsewhere in the application papers, but it is to applicant’s advantage to
 submit the data via an application data sheet. To help ensure that the Office
 efficiently captures the data, the Office specifies a particular format to be used. The
 Office also provides a fillable form (PTO/AIA/14 for applications filed on or after
 September 16, 2012 and PTO/SB/14 for applications filed prior to September 16, 2012) on
 the Office’s website, which contains the bibliographic data arranged in the specified
 format. The Office’s fillable form is designed to be completed electronically and then
 filed via Patent Center or in paper. However, the data will only load directly into the
 USPTO patent electronic system when the PTO/AIA/14 or PTO/SB/14 is submitted as a
 Fillable Form, rather than a scanned portable document format (PDF) image.
 

 In addition to the Office’s fillable form, applicants
 have the option to utilize the enhanced Web-based version of the ADS for submission of
 an ADS with the filing of a new utility or design application. For more information, see
 the “Quick Start Guide for Web-based Application Data Sheet (Web ADS)” available at
 www.uspto.gov/patents/apply/ patent-center . If the applicant is a
 registered filer of Patent Center, a Web-based corrected ADS is also available for use
 for certain existing applications filed on or after September 16, 2012. A corrected
 Web-based ADS is not permitted in international applications, national stage
 applications under 35
 U.S.C. 371 , provisional applications, plant applications,
 reexamination proceedings, and supplemental examinations under 35 U.S.C.
 257 . The corrected Web-based ADS will be pre-populated with
 information of record. Therefore, applicants can type in the desired changes in the
 corrected Web-based ADS and the system will create a PDF version with the appropriate
 strike-through and underlining.
 

 
 601.05(a) Application Data Sheet (ADS) -- Application
 Filed On or After September 16, 2012 [R-01.2024]
 

 [Editor Note: See MPEP § 601.05(b) for a discussion
 of the requirements of an ADS for applications filed before September 16, 2012.
 37 CFR
 1.76(b)(3) , directed to reference filing under
 37 CFR
 1.57(a) , is applicable only to patent applications filed
 under 35
 U.S.C. 111 on or after December 18, 2013. For
 37 CFR
 1.76(b)(3) applicable to applications filed on or after
 September 16, 2012 and before December 18, 2013, see 37 CFR 1.76 (2012-09-16
 thru 2013-12-17) ; for applications filed prior to September
 16, 2012, see pre-AIA 37 CFR 1.76 as reproduced in MPEP §
 601.05(b) .] 

 
 37 CFR 1.76 Application data sheet. 

 
 (a) Application data sheet: An application data sheet is a
 sheet or sheets, that may be submitted in a provisional application under
 35
 U.S.C. 111(b) , a nonprovisional application under
 35
 U.S.C. 111(a) , a nonprovisional international design
 application, or a national stage application under 35 U.S.C.
 371 , and must be submitted when required by
 §
 1.55 or 1.78 to claim priority
 to or the benefit of a prior-filed application under 35 U.S.C.
 119 , 120 , 121 , 365 , or
 386 . An application data
 sheet must be titled "Application Data Sheet." An application data sheet
 must contain all of the section headings listed in paragraph (b) of this
 section, except as provided in paragraph (c)(2) of this section, with any
 appropriate data for each section heading. If an application data sheet is
 provided, the application data sheet is part of the application for which it
 has been submitted.
 

 (b) Bibliographic data. Bibliographic data as
 used in paragraph (a) of this section includes:
 
 (1) Inventor information. This information includes the
 legal name, residence, and mailing address of the inventor or each
 joint inventor.
 

 (2) Correspondence information. This information
 includes the correspondence address, which may be indicated by
 reference to a customer number, to which correspondence is to be
 directed (see § 1.33(a) ).
 

 (3) Application information. This information includes
 the title of the invention, the total number of drawing sheets, a
 suggested drawing figure for publication (in a nonprovisional
 application), any docket number assigned to the application, the type
 of application (e.g., utility, plant, design, reissue, provisional),
 whether the application discloses any significant part of the subject
 matter of an application under a secrecy order pursuant to
 §
 5.2 of this chapter (see §
 5.2(c) ), and, for plant applications, the Latin
 name of the genus and species of the plant claimed, as well as the
 variety denomination. When information concerning the previously filed
 application is required under § 1.57(a) , application information also includes
 the reference to the previously filed application, indicating that the
 specification and any drawings of the application are replaced by the
 reference to the previously filed application, and specifying the
 previously filed application by application number, filing date, and
 the intellectual property authority or country in which the previously
 filed application was filed.
 

 (4) Representative information. This information
 includes the registration number of each practitioner having a power
 of attorney in the application (preferably by reference to a customer
 number). Providing this information in the application data sheet does
 not constitute a power of attorney in the application (see
 § 1.32 ).
 

 (5) Domestic benefit information. This information
 includes the application number, the filing date, the status
 (including patent number if available), and relationship of each
 application for which a benefit is claimed under 35 U.S.C.
 119(e) , 120 ,
 121 ,
 365(c) , or 386(c) . Providing this information in the
 application data sheet constitutes the specific reference required by
 35 U.S.C. 119(e) or 120 , and §
 1.78 .
 

 (6) Foreign priority information. This information
 includes the application number, country (or intellectual property
 authority), and filing date of each foreign application for which
 priority is claimed. Providing this information in the application
 data sheet constitutes the claim for priority as required by
 35 U.S.C. 119(b) and §
 1.55 .
 

 (7) Applicant information: This information includes
 the name (either natural person or juristic entity) and address of the
 legal representative, assignee, person to whom the inventor is under
 an obligation to assign the invention, or person who otherwise shows
 sufficient proprietary interest in the matter who is the applicant
 under § 1.43 or
 § 1.46 . Providing
 assignment information in the application data sheet does not
 substitute for compliance with any requirement of part 3 of this
 chapter to have an assignment recorded by the Office.
 

 
 

 (c) Correcting and updating an application data
 sheet. 
 
 (1) Information in a previously submitted
 application data sheet, inventor's oath or declaration under
 § 1.63 ,
 § 1.64 or
 § 1.67 , or
 otherwise of record, may be corrected or updated until payment of the
 issue fee by a new application data sheet providing corrected or
 updated information, except that inventorship changes must comply with
 the requirements of § 1.48 , foreign
 priority and domestic benefit information changes must comply with
 §§ 1.55 and
 1.78 , and
 correspondence address changes are governed by §
 1.33(a) .
 

 (2) An application data sheet providing
 corrected or updated information may include all of the sections
 listed in paragraph (b) of this section or only those sections
 containing changed or updated information. The application data sheet
 must include the section headings listed in paragraph (b) of this
 section for each section included in the application data sheet, and
 must identify the information that is being changed, with underlining
 for insertions, and strike-through or brackets for text removed,
 except that identification of information being changed is not
 required for an application data sheet included with an initial
 submission under 35 U.S.C. 371 .
 

 
 

 (d) Inconsistencies between application data sheet and other
 documents. For inconsistencies between information that is
 supplied by both an application data sheet under this section and other
 documents:
 
 (1) The most recent submission will govern
 with respect to inconsistencies as between the information provided in
 an application data sheet, a designation of a correspondence address,
 or by the inventor's oath or declaration, except that:
 
 (i) The most recent application data
 sheet will govern with respect to foreign priority
 ( § 1.55 ) or
 domestic benefit ( § 1.78 )
 claims; and
 

 (ii) The naming of the inventorship is
 governed by § 1.41 and
 changes to inventorship or the names of the inventors is
 governed by § 1.48 .
 

 
 

 (2) The information in the application data
 sheet will govern when inconsistent with the information supplied at
 the same time by a designation of correspondence address or the
 inventor's oath or declaration. The information in the application
 data sheet will govern when inconsistent with the information supplied
 at any time in a Patent Cooperation Treaty Request Form, Patent Law
 Treaty Model International Request Form, Patent Law Treaty Model
 International Request for Recordation of Change in Name or Address
 Form, or Patent Law Treaty Model International Request for Recordation
 of Change in Applicant or Owner Form.
 

 (3) The Office will capture bibliographic
 information from the application data sheet. The Office will generally
 not review the inventor's oath or declaration to determine if the
 bibliographic information contained therein is consistent with the
 bibliographic information provided in an application data sheet.
 Incorrect bibliographic information contained in an application data
 sheet may be corrected as provided in paragraph (c)(1) of this
 section.
 

 
 

 (e) Signature requirement. An application data sheet must be
 signed in compliance with § 1.33(b) . An unsigned
 application data sheet will be treated only as a transmittal letter.
 

 (f) Patent Law Treaty Model International Forms. The
 requirement in § 1.55 or
 §
 1.78 for the presentation of a priority or benefit
 claim under 35 U.S.C. 119 ,
 120 , 121 , or
 365 in an application data sheet will be satisfied by
 the presentation of such priority or benefit claim in the Patent Law Treaty
 Model International Request Form, and the requirement in §
 1.57(a) for a reference to the previously filed
 application in an application data sheet will be satisfied by the
 presentation of such reference to the previously filed application in the
 Patent Law Treaty Model International Request Form. The requirement in
 §
 1.46 for the presentation of the name of the applicant
 under 35 U.S.C. 118 in an application data sheet will be
 satisfied by the presentation of the name of the applicant in the Patent Law
 Treaty Model International Request Form, Patent Law Treaty Model
 International Request for Recordation of Change in Name or Address Form, or
 Patent Law Treaty Model International Request for Recordation of Change in
 Applicant or Owner Form, as applicable.
 

 (g) Patent Cooperation Treaty Request Form. The requirement
 in §
 1.78 for the presentation of a benefit claim under
 35
 U.S.C. 119 , 120 , 121 , or 365 in an application
 data sheet will be satisfied in a national stage application under
 35
 U.S.C. 371 by the presentation of such benefit claim
 in the Patent Cooperation Treaty Request Form contained in the international
 application or the presence of such benefit claim on the front page of the
 publication of the international application under PCT Article
 21(2) . The requirement in §
 1.55 or § 1.78 for the
 presentation of a priority or benefit claim under 35 U.S.C.
 119 , 120 , 121 , or 365 in an application
 data sheet and the requirement in § 1.46 for the
 presentation of the name of the applicant under 35 U.S.C.
 118 in an application data sheet will be satisfied in
 an application under 35 U.S.C. 111 by the
 presentation of such priority or benefit claim and presentation of the name
 of the applicant in a Patent Cooperation Treaty Request Form. If a Patent
 Cooperation Treaty Request Form is submitted in an application under
 35 U.S.C. 111 , the Patent Cooperation Treaty Request
 Form must be accompanied by a clear indication that treatment of the
 application as an application under 35 U.S.C.
 111 is desired.
 

 
 

 37 CFR
 1.76(a) provides that an application data sheet may be
 submitted in a provisional application under 35 U.S.C. 111(b) , a
 nonprovisional application under 35 U.S.C. 111(a) , a
 nonprovisional international design application, or a national stage application
 under 35 U.S.C.
 371 . However, 37 CFR 1.76(a) also provides that
 an application data sheet must be submitted when required by
 37 CFR
 1.55 and 1.78 to claim priority to, or the
 benefit of, a prior-filed application under 35 U.S.C. 119 , 120 ,
 121 , 365 , or 386 
 in accordance with 37 CFR 1.55 and 1.78 . An
 application data sheet must also be submitted in accordance with
 37 CFR
 1.46 when an application is filed by an assignee, a person to
 whom the inventor is under an obligation to assign the invention, or a person who
 otherwise shows a sufficient proprietary interest in the matter under
 35 U.S.C.
 118 .
 

 I. BIBLIOGRAPHIC INFORMATION 37 CFR
 1.76(a) requires that any ADS contain the seven headings
 listed in 37
 CFR 1.76(b) with any appropriate data for each section
 heading (except as provided in 37 CFR 1.76(c)(2) for an ADS
 providing corrected or updated information). The ADS must be titled “Application
 Data Sheet” and any heading that does not contain any corresponding data will be
 interpreted by the Office to mean that there is no corresponding data for that
 heading anywhere in the application. Bibliographic data under 37 CFR
 1.76(b) includes: (1) inventor information; (2)
 correspondence information; (3) application information; (4) representative
 information; (5) domestic benefit information; (6) foreign priority information;
 and (7) applicant information. 
 

 Inventor information includes the legal name,
 residence, and mailing address of each inventor ( 37 CFR
 1.41(b) ). Whether or not the inventor is the applicant, the
 Office will to continue to use the inventor’s name for application and patent
 identification purposes. Inventor names tend to provide a more distinct
 identification than assignee name, for example. The “mailing address” is the
 address where the inventor customarily receives mail.
 

 Correspondence information includes the
 correspondence address, which may be indicated by reference to a customer number,
 to which correspondence is to be directed (see 37 CFR
 1.33(a) ).
 

 As set forth in 37 CFR
 1.76(b)(3) , application information includes the title of
 the invention, the total number of drawing sheets, a suggested drawing figure for
 publication (in a nonprovisional application), any docket number assigned to the
 application, and the type of application (e.g., utility, plant, design, reissue,
 provisional). The Office now uses the drawing figure suggested by the applicant
 for the front page of the patent application publication when the suggestion is
 included on a compliant ADS timely filed before the process of publishing the
 application begins. However, the Office continues not to be bound by the
 applicant’s figure suggestion, and failure to use the suggested figure for the
 first page of the patent application publication will not be considered a material
 mistake for purposes of corrected publication under 37 CFR
 1.221(b) . See Applicant-Suggested Drawing Figure in the
 Publication of Patent Applications, 1514 OG 107 (September 5, 2023). 
 

 Application information includes whether the
 application discloses any significant part of the subject matter of an application
 under a secrecy order pursuant to 37 CFR 5.2(c) .
 37 CFR
 1.76(b)(3) also requests that the plant patent applicant
 state the Latin name and the variety denomination for the plant claimed. The Latin
 name of the genus and species and the variety denomination of the claimed plant
 are usually included in the specification of the plant patent application, and
 will be included in any plant patent or plant patent application publication if
 included in an application data sheet or patent application. The Office, pursuant
 to the “International Convention for the Protection of New Varieties of Plants”
 (generally known by its French acronym as the UPOV convention), has been asked to
 compile a database of the plants patented and the database must include the Latin
 name and the variety denomination of each patented plant. Having this information
 in an ADS will make the process of compiling this database more efficient.
 

 For applications filed on or after December 18,
 2013, when information concerning the previously filed application is required
 under 37 CFR
 1.57(a) , application information also includes the reference
 to the previously filed application, indicating that the specification and any
 drawings of the application are replaced by the reference to the previously filed
 application, and specifying the previously filed application by application
 number, filing date, and the intellectual property authority or country in which
 the previously filed application was filed. Effective December 18, 2013,
 37 CFR
 1.57 and 37 CFR 1.76(b)(3) were amended
 to implement the reference filing provisions of 35 U.S.C.
 111(c) . 37 CFR 1.57(a) now provides
 that, subject to the conditions and requirements of 37 CFR
 1.57(a) , a reference to a previously filed application, made
 in the English language in an ADS in accordance with 37 CFR
 1.76 upon the filing of an application under
 35
 U.S.C. 111(a) indicating that the specification and any
 drawings of the application under 35 U.S.C. 111(a) are replaced
 by the reference to the previously filed application, shall constitute the
 specification and any drawings of the application under 35 U.S.C.
 111(a) for purposes of a filing date under 37 CFR
 1.53(b) . Thus, applicants filing by reference under
 35
 U.S.C. 111(c) and 37 CFR 1.57 should take care
 to ensure that the application number, filing date, and intellectual property
 authority or country of the previously filed application are accurately specified
 on the ADS as the specification and drawings of the application specified on the
 ADS is the specification and drawings of the application being filed by reference
 under 35
 U.S.C. 111(c) and 37 CFR 1.57 . See
 MPEP §
 601.01(a) , subsection III, for more information on
 reference filing. The reference to a previously filed application in an ADS under
 37 CFR
 1.57(a) is not sufficient to establish a priority or
 benefit claim to that previously filed application. Applicants must
 still provide priority and/or benefit information under the domestic benefit
 information heading or foreign priority information heading, as appropriate, in
 the application data sheet even if utilizing the reference filing provisions of
 35
 U.S.C. 111(c) and 37 CFR 1.57(a) . 
 

 Representative information includes the registration
 number of each practitioner appointed with a power of attorney in the application
 (preferably by reference to a customer number). 37 CFR
 1.76(b)(4) states that providing this information in the
 application data sheet does not constitute a power of attorney in the application
 (see 37 CFR
 1.32 ). This is because the Office does not expect the
 application data sheet to be executed by the party (applicant or assignee) who may
 appoint a power of attorney in the application.
 

 Domestic benefit information includes the
 application number (series code and serial number), the filing date, the status
 (including patent number if available), and relationship of each application for
 which a benefit is claimed under 35 U.S.C. 119(e) ,
 120 , 121 , 365(c) , or
 386(c) . The application data sheet, if provided, is
 considered part of the application. 37 CFR 1.76(b)(5) states that
 providing this information in the application data sheet constitutes the specific
 reference required by 35 U.S.C. 119(e) or
 120 , and 37 CFR 1.78 . A specific
 reference to the earlier application(s) is no longer required to be made in the
 specification, such as in the first sentence(s) thereof. The continuity data for
 the patent front page will be taken from the application data sheet. No continuity
 data will be included in the first sentence(s) of the specification, unless
 applicant separately provides it there. 37 CFR 1.76(b)(5) does not
 apply to provisional applications.
 

 Foreign priority information includes the
 application number, country (or intellectual property authority), and filing date
 of each foreign application for which priority is claimed. 37 CFR
 1.76(b)(6) states that providing this information in the
 application data sheet constitutes the claim for priority as required by
 35 U.S.C.
 119(b) and 37 CFR 1.55 . 37 CFR
 1.76(b)(6) does not apply to provisional applications.
 

 37 CFR
 1.76(b)(7) provides that applicant information includes the
 name (either natural person or juristic entity) and address of the applicant under
 37 CFR
 1.43 or 1.46 . Thus, 37 CFR
 1.76(b)(7) provides for the situation in which the applicant
 is a person other than the inventor under 37 CFR 1.43 (legal
 representative) or 37 CFR 1.46 (assignee, person
 to whom the inventor is under an obligation to assign the invention, or person who
 otherwise shows sufficient proprietary interest in the matter). This heading
 should be left blank if the applicant is the inventor or is the remaining joint
 inventor or inventors ( 37 CFR 1.45 ).
 

 37 CFR
 1.46(b) provides that if an application is filed by the
 assignee, a person to whom the inventor is under an obligation to assign the
 invention, or a person who otherwise shows sufficient proprietary interest in the
 matter, the application must contain an application data sheet under
 37 CFR
 1.76 specifying the assignee, person to whom the inventor is
 under an obligation to assign the invention, or person who otherwise shows
 sufficient proprietary interest in the matter in the applicant information
 section. 37 CFR 1.46(b) also requires
 if an application entering the national stage under 35 U.S.C.
 371 , or a nonprovisional international design application,
 is applied for by a person other than the inventor under 37 CFR
 1.46(a) , the assignee, person to whom the inventor is under
 an obligation to assign the invention, or person who otherwise shows sufficient
 proprietary interest in the matter must have been identified as the applicant for
 the United States in the international stage of the international application or
 as the applicant in the publication of the international registration under Hague
 Agreement Article 10(3). 37 CFR 1.46(c)(1) provides
 that any request to correct or update the name of the applicant must include an
 application data sheet under 37 CFR 1.76 specifying the
 corrected or updated name of the applicant in the applicant information section in
 accordance with 37 CFR 1.76(c)(2) .
 37
 CFR 1.46(c)(1) also provides that a change in the name of
 the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be
 effective to change the name of the applicant in a nonprovisional international
 design application. 37 CFR 1.46(c)(2) provides
 that any request to change the applicant must include an application data sheet
 under 37 CFR
 1.76 specifying the applicant in the applicant information
 section and comply with 37 CFR 3.71 and
 3.73 . The application data sheet must comply with the
 provisions for correcting and updating an application data sheet set forth in
 37 CFR
 1.76(c) . 37 CFR 1.76(b)(7) explains
 that providing assignment information in the application data sheet does not
 substitute for compliance with any requirement of 37 CFR part 3 to have an
 assignment recorded by the Office. Assignment information must be recorded to have
 legal effect.
 

 II. CORRECTING AND UPDATING AN ADS OR INFORMATION OTHERWISE OF RECORD 37 CFR
 1.76(c) provides the procedure for correcting and updating
 not only an application data sheet (ADS), but also information otherwise of record
 (e.g., information provided on the most recent filing receipt). Any ADS filed
 after the filing date of the application or the submission of a first ADS is
 considered a corrected (or updated) ADS even if an ADS was not previously
 submitted. Such a corrected ADS must identify the information that is being
 changed with underlining for insertions and strike-through or brackets for text
 removed, except that identification of information being changed is not required
 for an ADS included with an initial submission under 35 U.S.C.
 371 . In general, the identification of the information being
 changed should be made relative to the most recent filing receipt. If appropriate,
 use of the corrected Web-based ADS is recommended because it will pre-populate
 with information of record. Accordingly, applicants can type in the desired
 changes in the corrected Web-based ADS, and the system will create a PDF version
 with the appropriate strike-through and underlining. A corrected Web-based ADS,
 however, is not permitted in international applications, national stage
 applications under 35 U.S.C. 371 , provisional
 applications, plant applications, reexamination proceedings, and supplemental
 examinations under 35 U.S.C. 257 . For more
 information, see the “Quick Start Guide for Corrected Web-based Application Data
 Sheet (Corrected Web ADS)” available at www.uspto.gov/patents/apply/patent-center .
 

 A corrected ADS may be submitted until payment of
 the issue fee to either correct or update information in a previously submitted
 application data sheet, or in an inventor’s oath or declaration under
 37 CFR
 1.63 , 1.64 , or 1.67 , or
 otherwise of record. See 37 CFR 1.76(c)(1) . Note,
 however, a corrected ADS filed after final rejection or allowance is not entered
 as a matter of right. See 37 CFR 1.116 or
 1.312 , respectively. For a discussion of amendments and
 other replies after final rejection or action, see MPEP § 714.12 
 and §
 714.13 . For a discussion of amendments filed after
 notice of allowance, see MPEP § 714.16 . In addition,
 inventorship changes must comply with the requirements of 37 CFR 1.48 ,
 foreign priority and domestic benefit information changes must comply with
 37 CFR
 1.55 and 1.78 , and correspondence
 address changes must comply with 37 CFR 1.33(a) . Note also that
 any request to correct or update the name of the applicant, or change the
 applicant, must comply with 37 CFR 1.46(c) .
 

 A corrected ADS may include all of the section
 headings listed in 37 CFR 1.76(b) with all
 appropriate data for each heading or only those sections (including the section
 headings) containing changed or updated information. See 37 CFR
 1.76(c)(2) .
 

 A corrected ADS should be filed with a request for a
 corrected filing receipt unless accompanied by a request to take some other
 action, such as a request under 37 CFR 1.48 , a request under
 37
 CFR 1.46(c) , or the submission of a power of attorney. A
 corrected ADS accompanying a request to change the applicant under
 37
 CFR 1.46(c) must show the changes in applicant information
 relative to the applicant information on the most recent filing receipt, even if
 an ADS was not previously filed or an applicant was not previously identified in
 an ADS because the filing receipt identifies the applicant information of record.
 If no applicant was identified in the applicant information section of a properly
 signed ADS filed with the application, a corrected ADS identifying a new applicant
 with underlining does not need to show the deletion of the inventor-applicant(s)
 with strikethrough. A corrected ADS submitted to correct information provided in
 the inventor’s oath or declaration, such as residence information for an inventor,
 must show the original incorrect information with strike-through or brackets, and
 the new information with underlining, as if the incorrect information was
 submitted in an ADS filed with the application even though an ADS was not
 previously filed. If there are multiple inventors, all of the inventors must be
 listed in the “Inventor Information” section of the corrected ADS, even if the
 residence information is only being changed for one of the inventors. 
 

 If submitted during the time period for making a
 benefit or priority claim set forth in 37 CFR 1.78 or
 1.55 , a request for corrected filing receipt should be
 filed with a corrected ADS to correct domestic benefit or foreign priority claim
 information. A petition for an unintentionally delayed claim under
 37 CFR
 1.78(c) or (e) or 37 CFR 1.55(e) may be required
 if the domestic benefit or foreign priority claim is being submitted outside the
 time period for making a benefit or priority claim. Where the most recent filing
 receipt does not include a benefit claim or priority claim, either because a
 previously submitted ADS failed to comply with 37 CFR
 1.78 or 1.55 or the claim was not
 previously included in an ADS, a corrected ADS submitted to add the benefit or
 priority claim must identify the addition of the benefit claim or priority claim
 with underlining relative to the most recent filing receipt (i.e., the entire
 benefit or priority claim must be underlined). For example, if an ADS included a
 benefit claim but the relationship between the instant application and the parent
 application was not provided, and the most recent filing receipt for the
 application shows no benefit claim, the entire benefit claim must be shown with
 underlining in the corrected ADS. In addition, if the ADS identified an incorrect
 benefit claim (e.g., “division of” instead of “continuation of”) and the most
 recent filing receipt included the incorrect benefit claim, the corrected ADS
 should identify the information being deleted (e.g., “division of”) with
 strike-through or brackets, and should identify the information being added (e.g.,
 “continuation of”) with underlining. In the rare circumstance where a domestic
 benefit or a priority claim is being deleted, applicant must provide a corrected
 ADS identifying the deletion of the foreign priority claim with strike-through or
 brackets. Before deleting a domestic benefit claim or a foreign priority claim,
 applicant should consider the status of the application since an amendment or ADS
 filed after final rejection or allowance is not entered as a matter of right and
 must be filed in compliance with 37 CFR 1.116 or
 1.312 , respectively. Applicants are cautioned that new
 prior art may be available as a result of deleting the claim. Also, deleting a
 benefit or priority claim may be considered a showing that the applicant is
 intentionally waiving the benefit claim or priority claim to the prior application
 in the instant application. See MPEP §
 211.02(a) , subsection III. 
 

 III. TREATMENT OF INCONSISTENT INFORMATION Resolution of inconsistent information supplied by
 both an application data sheet and other documents (e.g., the oath or declaration
 under 37 CFR
 1.63 , 1.64 , or 1.67 )
 are addressed in 37 CFR 1.76(d) . 
 

 37 CFR
 1.76(d)(1) provides that the most recent submission will
 govern (control) with respect to inconsistencies as between the information
 provided in an application data sheet, a designation of a correspondence address,
 or by the inventor’s oath or declaration, except that: (1) the most recent
 application data sheet will govern with respect to foreign priority
 ( 37 CFR
 1.55 ) or domestic benefit ( 37 CFR
 1.78 ) claims; and (2) the naming of the inventorship is
 governed by 37 CFR 1.41 and changes to inventorship or the names of the
 inventors is governed by 37 CFR 1.48 .
 

 37 CFR
 1.76(d)(2) provides that the information in the application
 data sheet will govern when the inconsistent information is supplied at the same
 time by a designation of correspondence address or the inventor’s oath or
 declaration. The information in the application data sheet will also govern when
 inconsistent with the information supplied at any time in a Patent Cooperation
 Treaty Request Form, Patent Law Treaty Model International Request Form, Patent
 Law Treaty Model International Request for Recordation of Change in Name or
 Address Form, or Patent Law Treaty Model International Request for Recordation of
 Change in Applicant or Owner Form.
 

 If an ADS is inconsistent with the information
 provided in another document that was submitted at the same time or prior to the
 ADS submission, the ADS will control. This is because the application data sheet
 is intended to be the means by which applicant provides complete bibliographic
 information. In the small number of instances where another document has more
 accurate information than a concurrently supplied application data sheet
 ( 37 CFR
 1.76(d)(2) ), a corrected application data sheet should be
 submitted to conform the information in the ADS to the correct information as
 provided in the other document(s).
 

 37 CFR
 1.76(d)(3) provides that the Office will capture
 bibliographic information from the application data sheet. 37 CFR
 1.76(d)(3) further provides that the Office will generally
 not review the inventor’s oath or declaration to determine if the bibliographic
 information contained therein is consistent with the bibliographic information
 provided in an application data sheet. 37 CFR 1.76(d)(3) further
 provides that incorrect bibliographic information contained in an application data
 sheet may be corrected as provided in 37 CFR 1.76(c)(1) .
 

 
 Examples:

 If an application naming inventors A and B is
 filed with an application data sheet that improperly identifies the residence
 of inventor B and an executed 37 CFR 1.63 declaration
 that properly identifies the residence of inventor B, the Office will capture
 the residence information of inventor B as identified in the application data
 sheet, and include that information in the filing receipt. Applicant may
 correct the residence information by submitting an application data sheet under
 37 CFR
 1.76(c) with the name of inventor B and the corrected
 residence for inventor B with underlining for insertions and strike-through or
 brackets for text removed. 
 

 

 If an application is filed with an application data
 sheet improperly identifying inventors A, B and C and an executed
 37 CFR
 1.63 declaration correctly setting forth the inventorship as
 A and B, the Office will capture the inventorship as inventors A, B and C based on
 the information in the application data sheet, and include that information in the
 filing receipt. To correct the inventorship, applicant must submit a request to
 correct the inventorship pursuant to 37 CFR 1.48 . See
 MPEP §
 602.01(c) et seq. 

 If an application is filed with an application data
 sheet, the Office will capture the applicant information as identified in the
 application data sheet. To change the name of the applicant, a request in
 accordance with 37 CFR 1.46(c) , and in
 compliance with 37 CFR 3.71 and
 3.73 , is required. See MPEP §
 605.01 , subsection II.
 

 IV. ADDITIONAL INFORMATION The application data sheet form PTO/AIA/14 provides
 a section where applicants can make a request not to publish the application or a
 request for early publication.
 

 The application data sheet form PTO/AIA/14 provides
 a section where applicants can provide an Authorization to Permit Access to the
 Instant Application by Participating Offices. If the box in this section of the
 form is checked, the Office has the authority to provide access to the instant
 patent application to the participating offices in which a foreign application
 claiming priority to the instant patent application is filed.
 

 The application data sheet form PTO/AIA/14 provides
 an assignee information section, which includes the name (either person or
 juristic entity) and address of the assignee of the entire right, title, and
 interest in an application. The inclusion of this information in the application
 data sheet does not substitute for compliance with any requirement of 37 CFR part
 3 to have an assignment recorded by the Office. Providing assignee information in
 the application data sheet is considered a request to include such information on
 the patent application publication, since there is no other reason for including
 such information in the application data sheet. Assignment information must be
 recorded to have legal effect. Assignees who are the applicant will appear on the
 patent application publication as the applicant and only need to separately
 provide assignee information in the assignee information section if identification
 as an assignee is also desired on the patent application publication.
 

 37 CFR
 1.76(e) provides that an application data sheet must be
 signed in compliance with 37 CFR 1.33(b) . The rule
 further provides that an unsigned application data sheet will be treated only as a
 transmittal letter. Thus, an unsigned application data sheet will not be effective
 to provide the name of the inventor for any invention claimed in the application
 ( 37 CFR
 1.41(b) ), name as the applicant an assignee, obligated
 assignee, or a person who otherwise shows sufficient propriety interest in the
 application ( 37 CFR 1.46 ), make a claim to priority of a foreign
 application ( 37 CFR 1.55 ), or make a claim to the benefit of a
 prior-filed domestic application ( 37 CFR 1.78 ).
 

 Effective December 18, 2013 for all applications no
 matter when filed, 37 CFR 1.76 was amended by
 adding new paragraphs (f) and (g) to permit the use of Patent Law Treaty Model
 International Forms as appropriate or the Patent Cooperation Treaty Request Form
 in lieu of an application data sheet under 37 CFR 1.76 to provide certain
 information. However, as provided in 37 CFR 1.76(d)(2) , information
 in an ADS will govern when inconsistent with the information supplied at any time
 in such forms. Furthermore, if applicants want to postpone submission of the
 inventor’s oath or declaration until after the time period set to complete the
 application as provided in 37 CFR 1.53(f)(1) or (2) , an
 ADS that provides the inventor information is required. Accordingly, the use of an
 ADS to supply application information is encouraged.
 

 37 CFR
 1.76(f) provides that: (1) The requirement in
 37 CFR
 1.55 or 37 CFR 1.78 for the
 presentation of a priority or benefit claim under 35 U.S.C.
 119 , 120 , 121 , or
 365 in an application data sheet will be satisfied by the
 presentation of such priority or benefit claim in the Patent Law Treaty Model
 International Request Form; (2) the requirement in 37 CFR
 1.57(a) for a reference to the previously filed application
 in an application data sheet will be satisfied by the presentation of such
 reference to the previously filed application in the Patent Law Treaty Model
 International Request Form; and (3) the requirement in 37 CFR
 1.46 for the presentation of the name of the applicant under
 35 U.S.C.
 118 in an application data sheet will be satisfied by the
 presentation of the name of the applicant in the Patent Law Treaty Model
 International Request Form, Patent Law Treaty Model International Request for
 Recordation of Change in Name or Address Form, or Patent Law Treaty Model
 International Request for Recordation of Change in Applicant or Owner Form, as
 applicable.
 

 37 CFR
 1.76(g) provides that the requirement in 37 CFR
 1.78 for the presentation of a benefit claim under
 35 U.S.C.
 119 , 120 , 121 , or
 365 in an application data sheet will be satisfied in a
 national stage application under 35 U.S.C. 371 by the
 presentation of such benefit claim in the Patent Cooperation Treaty Request Form
 contained in the international application or the presence of such benefit claim
 on the front page of the publication of the international application under
 PCT Article
 21(2) . 37 CFR 1.76(g) states ‘‘the
 Patent Cooperation Treaty Request Form contained in the international
 application’’ to make clear that the provision does not allow for that addition or
 correction of benefit claim (or any other) information during the national stage
 via the submission of a new Patent Cooperation Treaty Request Form. Applicants may
 add or correct benefit claim (or any other) information during the national stage
 via the submission of an application data sheet under 37 CFR
 1.76 (assuming that the conditions and requirements for such
 addition or correction are satisfied). 37 CFR
 1.76(g) provides for presence of such benefit claim on the
 front page of the publication of the international application under
 PCT Article
 21(2) to account for replacement sheets of the Patent
 Cooperation Treaty Request Form that may not be forwarded to each national office
 but that are reflected in the International Bureau’s publication of the
 international application. 37 CFR 1.76(g) does not
 mention either the provisions in 37 CFR 1.55 for the
 presentation of a priority claim under 35 U.S.C. 119 or
 365 in an application data sheet or the provisions in
 37 CFR
 1.46 for the presentation of the name of the applicant under
 35 U.S.C.
 118 in an application data sheet with respect to a national
 stage application under 35 U.S.C. 371 as this
 information is taken from the WIPO records of the international application in a
 national stage application under 35 U.S.C. 371 .
 

 37 CFR
 1.76(g) also provides that the requirement in
 37 CFR
 1.55 or 37 CFR 1.78 for the
 presentation of a priority or benefit claim under 35 U.S.C.
 119 , 120 , 121 , or
 365 in an application data sheet and the requirement in
 37 CFR
 1.46 for the presentation of the name of the applicant under
 35 U.S.C.
 118 in an application data sheet will be satisfied in an
 application under 35 U.S.C. 111 by the
 presentation of such priority or benefit claim and presentation of the name of the
 applicant in a Patent Cooperation Treaty Request Form. 37 CFR
 1.76(g) finally also provides that if a Patent Cooperation
 Treaty Request Form is submitted in an application under 35 U.S.C.
 111 , the Patent Cooperation Treaty Request Form must be
 accompanied by a clear indication that treatment of the application as an
 application under 35 U.S.C. 111 is desired.
 

 

 
 601.05(b) Application Data Sheet (ADS) in Application
 Filed Before September 16, 2012 [R-01.2024]
 

 [Editor Note: See MPEP § 601.05(a) for a discussion
 of the requirements of an ADS for applications filed on or after September 16,
 2012.] 

 
 37 CFR 1.76 (pre-AIA) Application data sheet. 

 [Editor Note: 37 CFR 1.76 as reproduced
 below includes the revisions to paragraph (d)(2) and the addition of paragraphs
 (f) and (g) set forth in Changes to Implement the Patent Law Treaty, 78 FR
 62368 (October 21, 2013)(final rule) as those provisions are applicable to
 applications filed before September 16, 2012.] 

 
 (a) Application data sheet. An application data sheet is a
 sheet or sheets, that may be voluntarily submitted in either provisional or
 nonprovisional applications, which contains bibliographic data, arranged in
 a format specified by the Office. An application data sheet must be titled
 “Application Data Sheet” and must contain all of the section headings listed
 in paragraph (b) of this section, with any appropriate data for each section
 heading. If an application data sheet is provided, the application data
 sheet is part of the provisional or nonprovisional application for which it
 has been submitted.
 

 (b) Bibliographic data. Bibliographic data as used in
 paragraph (a) of this section includes:
 
 (1) Applicant information. This information includes
 the name, residence, mailing address, and citizenship of each
 applicant ( § 1.41(b) ). The
 name of each applicant must include the family name, and at least one
 given name without abbreviation together with any other given name or
 initial. If the applicant is not an inventor, this information also
 includes the applicant’s authority ( §§
 1.42 , 1.43 , and
 1.47 ) to apply for the patent on behalf of the
 inventor.
 

 (2) Correspondence information. This information
 includes the correspondence address, which may be indicated by
 reference to a customer number, to which correspondence is to be
 directed (see § 1.33(a) ).
 

 (3) Application information. This information includes
 the title of the invention, a suggested classification, by class and
 subclass, the Technology Center to which the subject matter of the
 invention is assigned, the total number of drawing sheets, a suggested
 drawing figure for publication (in a nonprovisional application), any
 docket number assigned to the application, the type of application
 (e.g., utility, plant, design, reissue, provisional), whether the
 application discloses any significant part of the subject matter of an
 application under a secrecy order pursuant to §
 5.2 of this chapter (see §
 5.2(c) ), and, for plant applications, the Latin
 name of the genus and species of the plant claimed, as well as the
 variety denomination. The suggested classification and Technology
 Center information should be supplied for provisional applications
 whether or not claims are present. If claims are not present in a
 provisional application, the suggested classification and Technology
 Center should be based upon the disclosure.
 

 (4) Representative information. This information
 includes the registration number of each practitioner having a power
 of attorney in the application (preferably by reference to a customer
 number). Providing this information in the application data sheet does
 not constitute a power of attorney in the application (see
 §
 1.32 ).
 

 (5) Domestic priority information. This information
 includes the application number, the filing date, the status
 (including patent number if available), and relationship of each
 application for which a benefit is claimed under 35 U.S.C.
 119(e) , 120 ,
 121 , or 365(c) . Providing
 this information in the application data sheet constitutes the
 specific reference required by 35 U.S.C. 119(e) 
 or 120 , and
 § 1.78(a)(2) or
 § 1.78(a)(5) , and
 need not otherwise be made part of the specification.
 

 (6) Foreign priority information. This information
 includes the application number, country, and filing date of each
 foreign application for which priority is claimed. Providing this
 information in the application data sheet constitutes the claim for
 priority as required by 35 U.S.C. 119(b) 
 and § 1.55(a) .
 

 (7) Assignee information. This information includes the
 name (either person or juristic entity) and address of the assignee of
 the entire right, title, and interest in an application. Providing
 this information in the application data sheet does not substitute for
 compliance with any requirement of part 3 of this chapter to have an
 assignment recorded by the Office.
 

 
 

 (c) Supplemental application data sheets. Supplemental
 application data sheets:
 
 (1) May be subsequently supplied prior to
 payment of the issue fee either to correct or update information in a
 previously submitted application data sheet, or an oath or declaration
 under § 1.63 or
 §
 1.67 , except that inventorship changes are
 governed by § 1.48 ,
 correspondence changes are governed by §
 1.33(a) , and citizenship changes are governed by
 §
 1.63 or § 1.67 ; and
 

 (2) Must be titled “Supplemental Application
 Data Sheet,” include all of the section headings listed in paragraph
 (b) of this section, include all appropriate data for each section
 heading, and must identify the information that is being changed,
 preferably with underlining for insertions, and strike-through or
 brackets for text removed.
 

 
 

 (d) Inconsistencies between application data sheet
 and other documents . For inconsistencies between information that is
 supplied by both an application data sheet under this section and other
 documents.
 
 (1) The latest submitted information will
 govern notwithstanding whether supplied by an application data sheet,
 an amendment to the specification, a designation of a correspondence
 address, or by a § 1.63 or
 §
 1.67 oath or declaration, except as provided by
 paragraph (d)(3) of this section;
 

 (2) The information in the application data
 sheet will govern when the inconsistent information is supplied at the
 same time by an amendment to the specification, a designation of
 correspondence address, or a § 1.63 or
 §
 1.67 oath or declaration, except as provided by
 paragraph (d)(3) of this section. The information in the application
 data sheet will govern when inconsistent with the information supplied
 at any time in a Patent Cooperation Treaty Request Form, Patent Law
 Treaty Model International Request Form, Patent Law Treaty Model
 International Request for Recordation of Change in Name or Address
 Form, or Patent Law Treaty Model International Request for Recordation
 of Change in Applicant or Owner Form.
 

 (3) The oath or declaration under
 §
 1.63 or § 1.67 governs
 inconsistencies with the application data sheet in the naming of
 inventors ( § 1.41(a)(1) ) and
 setting forth their citizenship ( 35 U.S.C.
 115 );
 

 (4) The Office will capture bibliographic
 information from the application data sheet (notwithstanding whether
 an oath or declaration governs the information). Thus, the Office
 shall generally, for example, not look to an oath or declaration under
 §
 1.63 to see if the bibliographic information
 contained therein is consistent with the bibliographic information
 captured from an application data sheet (whether the oath or
 declaration is submitted prior to or subsequent to the application
 data sheet). Captured bibliographic information derived from an
 application data sheet containing errors may be corrected if applicant
 submits a request therefor and a supplemental application data
 sheet.
 

 
 

 [Editor Note: 37 CFR 1.76(e) is not
 applicable to applications filed before September 16, 2012.] 

 (f) Patent Law Treaty Model International Forms. The
 requirement in § 1.55 or
 §
 1.78 for the presentation of a priority or benefit
 claim under 35 U.S.C. 119 ,
 120 , 121 , or
 365 in an application data sheet will be satisfied by
 the presentation of such priority or benefit claim in the Patent Law Treaty
 Model International Request Form, and the requirement in §
 1.57(a) for a reference to the previously filed
 application in an application data sheet will be satisfied by the
 presentation of such reference to the previously filed application in the
 Patent Law Treaty Model International Request Form. The requirement in
 §
 1.46 for the presentation of the name of the applicant
 under 35 U.S.C. 118 in an application data sheet will be
 satisfied by the presentation of the name of the applicant in the Patent Law
 Treaty Model International Request Form, Patent Law Treaty Model
 International Request for Recordation of Change in Name or Address Form, or
 Patent Law Treaty Model International Request for Recordation of Change in
 Applicant or Owner Form, as applicable.
 

 (g) Patent Cooperation Treaty Request Form. The requirement
 in §
 1.78 for the presentation of a benefit claim under
 35
 U.S.C. 119 , 120 , 121 ,
 or 365 in an application data sheet will be satisfied in
 a national stage application under 35 U.S.C. 371 by the
 presentation of such benefit claim in the Patent Cooperation Treaty Request
 Form contained in the international application or the presence of such
 benefit claim on the front page of the publication of the international
 application under PCT Article 21(2) . The
 requirement in § 1.55 or
 §
 1.78 for the presentation of a priority or benefit
 claim under 35 U.S.C. 119 ,
 120 , 121 , or
 365 in an application data sheet and the requirement
 in §
 1.46 for the presentation of the name of the applicant
 under 35 U.S.C. 118 in an application data sheet will be
 satisfied in an application under 35 U.S.C. 111 by the
 presentation of such priority or benefit claim and presentation of the name
 of the applicant in a Patent Cooperation Treaty Request Form. If a Patent
 Cooperation Treaty Request Form is submitted in an application under
 35 U.S.C. 111 , the Patent Cooperation Treaty Request
 Form must be accompanied by a clear indication that treatment of the
 application as an application under 35 U.S.C.
 111 is desired.
 

 
 
 I. BIBLIOGRAPHIC INFORMATION The naming of the inventors and the setting forth of
 the citizenship of each inventor must be provided in the oath or declaration under
 pre-AIA 37
 CFR 1.63 (as required by pre-AIA 35 U.S.C. 115 ) even if
 this information is provided in the application data sheet.
 

 Applicant information includes the name, residence,
 mailing address, and citizenship of each applicant ( pre-AIA 37 CFR
 1.41(b) ). The name of each applicant must include the family
 name, and at least one given name without abbreviation together with any other
 given name or initial. (If the applicant is not an inventor, this information also
 includes the applicant’s authority ( pre-AIA 37 CFR 1.42 ,
 1.43 , and 1.47 ) to apply for the patent
 on behalf of the inventor. The “mailing address” is the address where applicant
 customarily receives mail.
 

 Correspondence information includes the
 correspondence address, which may be indicated by reference to a customer number,
 to which correspondence is to be directed (see pre-AIA 37 CFR 1.33(a) ).
 

 Application information includes the title of the invention, a
 suggested classification by class and subclass, the Technology Center (TC) to which
 the subject matter of the invention is assigned, the total number of drawing sheets,
 a suggested drawing figure for publication (in a nonprovisional application), any
 docket number assigned to the application, and the type of application (e.g.,
 utility, plant, design, reissue, provisional). Application information also includes
 whether the application discloses any significant part of the subject matter of an
 application under a secrecy order pursuant to 37 CFR 5.2(c) .
 

 Although the submission of the information related to a suggested
 classification and TC may be provided for both provisional and nonprovisional
 applications filed before September 16, 2012, the Office no longer utilizes this
 information and will continue to follow its present procedures for classifying and
 assigning new applications. With regard to the suggested drawing figure, the Office
 now uses the drawing figure suggested by the applicant for the front page of the
 patent application publication when the suggestion is included on a compliant ADS
 timely filed before the process of publishing the application begins. However, the
 Office continues not to be bound by the applicant’s figure suggestion, and failure to
 use the suggested figure for the first page of the patent application publication
 will not be considered a material mistake for purposes of corrected publication under
 37 CFR
 1.221(b) . See Applicant-Suggested Drawing Figure in
 the Publication of Patent Applications, 1514 OG 107 (September 5, 2023). 
 

 Pre-AIA 37 CFR
 1.76(b)(3) also requests that the plant patent applicant state
 the Latin name and the variety denomination for the plant claimed. The Latin name and
 the variety denomination of the claimed plant are usually included in the
 specification of the plant patent application, and will be included in any plant
 patent or plant patent application publication if included in an application data
 sheet or patent application. The Office, pursuant to the “International Convention
 for the Protection of New Varieties of Plants” (generally known by its French acronym
 as the UPOV convention), has been asked to compile a database of the plants patented
 and the database must include the Latin name and the variety denomination of each
 patented plant. Having this information in an ADS will make the process of compiling
 this database more efficient.
 

 Representative information includes the registration number
 appointed with a power of attorney in the application (preferably by reference to a
 customer number). Pre-AIA 37 CFR 1.76(b)(4) states that providing this
 information in the application data sheet does not constitute a power of attorney in
 the application (see pre-AIA 37 CFR 1.32 ). This is
 because the Office does not expect the application data sheet to be executed by the
 party (applicant or assignee) who may appoint a power of attorney in the
 application.
 

 Domestic priority information includes the application number
 (series code and serial number), the filing date, the status (including patent number
 if available), and relationship of each application for which a benefit is claimed
 under 35 U.S.C.
 119(e) , 120 , 121 , or
 365(c) . Pre-AIA 37 CFR 1.76(b)(5) states
 that providing this information in the application data sheet constitutes the
 specific reference required by 35 U.S.C.119(e) or
 120 . Since the application data sheet, if provided, is
 considered part of the application, the specific reference to an earlier filed
 provisional or nonprovisional application in the application data sheet satisfies the
 “specific reference” requirement of 35 U.S.C.119(e)(1) or
 120 , and it also complies with 37 CFR 1.78(a)(3) or
 (d)(3) . Thus, a specific reference does not otherwise have to
 be made in the specification, such as in the first sentence(s) of the specification.
 If continuity data is included in an application data sheet, but not in the first
 sentence(s) of the specification, the continuity data for the patent front page will
 be taken from the application data sheet. No continuity data will be included in the
 first sentence(s) of the specification if applicant does not provide it there.
 Pre-AIA 37 CFR
 1.76(b)(5) does not apply to provisional applications.
 

 Foreign priority information includes the application number,
 country, and filing date of each foreign application for which priority is claimed,
 as well as any foreign application having a filing date before that of the
 application for which priority is claimed. Pre-AIA 37 CFR 1.76(b)(6) states
 that providing this information in the application data sheet constitutes the claim
 for priority as required by 35 U.S.C. 119(b) and
 37
 CFR 1.55 . The patent statute, 35 U.S.C.
 119(b) , does not require that a claim to the benefit of a prior
 foreign application take any particular form. Pre-AIA 37 CFR 1.76(b)(6) does
 not apply to provisional applications.
 

 Pre-AIA 37 CFR
 1.76(b)(7) provides that the assignee information includes the
 name (either person or juristic entity) and address of the assignee of the entire
 right, title, and interest in an application. The inclusion of this information in
 the application data sheet does not substitute for compliance with any requirement of
 37 CFR part
 3 to have an assignment recorded by the Office. Providing
 assignee information in the application data sheet is considered a request to include
 such information on the patent application publication, since there is no other
 reason for including such information in the application data sheet. Assignment
 information must be recorded to have legal effect.
 

 Supplemental application data sheets may be subsequently supplied
 prior to payment of the issue fee to either correct or update information in a
 previously submitted application data sheet, or an oath or declaration under
 pre-AIA 37 CFR
 1.63 or 1.67 . See pre-AIA 37 CFR
 1.76(c)(1) . A supplemental data sheet cannot be used to correct
 the following: (1) inventorship changes ( 37 CFR 1.48 ); (2) correspondence
 changes ( pre-AIA 37
 CFR 1.33(a) ); and (3) citizenship changes ( pre-AIA 37 CFR
 1.63 or pre-AIA 37 CFR 1.67 ).
 Supplemental application data sheets must be titled “Supplemental Application Data
 Sheet” and also contain all of the seven section headings listed in 37 CFR 1.76(b) 
 with all appropriate data for each heading. Supplemental application data sheets
 identifying only the information that is being changed (added, deleted, or modified)
 in the supplemental ADS are not acceptable. A supplemental
 ADS containing only new or changed information is likely to confuse the record,
 create unnecessary work for the Office, and does not comply with pre-AIA 37 CFR
 1.76 . If no ADS was originally filed, but applicant wants to
 submit an ADS to correct, modify, or augment the original application data, the ADS,
 even though it is the first-filed ADS, must be titled “Supplemental Application Data
 Sheet.” 
 

 II. SUPPLEMENTAL ADS SUBMISSIONS For applications filed before September 16, 2012, when submitting
 an application data sheet after the initial filing of the application to correct,
 modify, or augment the application data sheet that was submitted with the
 application papers on filing, the following applies:
 

 
 (A) the supplemental application data sheet must be titled
 
 "Supplemental Application Data
 Sheet"
 
 
 (while the title 
 "Supplemental Application Data Sheet"
 
 
 
 is preferred, 
 "Supp.
 ADS"
 
 
 , 
 "Supplemental ADS"
 
 
 or other variations thereof will
 be accepted);
 

 (B) the supplemental application data sheet must be a full
 replacement copy of the original ADS, if any, with each of the seven section
 headings listed in pre-AIA 37 CFR 1.76(b) ,
 and with all appropriate data for the section heading;
 

 (C) the supplemental application data sheet must be submitted
 with all changes indicated, preferably with insertions or additions
 indicated by underlining, and deletions, with or without replacement data,
 indicated by strike-through or brackets; and
 

 (D) the supplemental application data sheet must be signed as
 it is a paper and/or amendment filed in the application (see
 pre-AIA
 37 CFR 1.33(b) and 37 CFR 11.18 ).
 

 
 Any ADS submitted after the filing date of the application is a
 supplemental ADS, regardless of whether an original ADS was submitted with the
 application papers on filing. A supplemental ADS that is being used to correct
 data shown in an oath or declaration, such as foreign priority or residence
 information for an inventor, would show the original incorrect information with
 strike-through or brackets, and the new information with underlining, as if an ADS
 had originally been used to submit the information. For example, if the original
 oath or declaration included a foreign priority claim, in order to delete the
 foreign priority claim, applicant should provide a supplemental ADS showing the
 foreign priority claim with strike-through or brackets to ensure that the patent
 will reflect such change.
 

 III. TREATMENT OF INCONSISTENT INFORMATION Resolution of inconsistent information supplied by both an
 application data sheet and other documents (e.g., the oath or declaration under
 pre-AIA 37
 CFR 1.63 , or pre-AIA 37 CFR 1.67 ) are
 addressed in pre-AIA 37 CFR 1.76 (d) . If an ADS is inconsistent with the
 information provided in another document that was submitted at the same time or
 previous to the ADS submission, the ADS will control. Pre-AIA 37 CFR
 1.76(d)(1) provides that the latest submitted information
 will govern notwithstanding whether supplied by an application data sheet, an
 amendment to the specification, a designation of a correspondence address, or by
 an oath or declaration under pre-AIA 37 CFR 1.63 or
 pre-AIA 37
 CFR 1.67 , except as provided by pre-AIA 37 CFR
 1.76(d)(3) . This is because the application data sheet is
 intended as the means by which applicants will provide most information to the
 Office. In the small number of instances where another document has more accurate
 information than a concurrently supplied application data sheet ( 37 CFR
 1.76(d)(2) ), a supplemental application data sheet should be
 submitted to conform the information presented by the supplemental application
 data sheet with the correct information in the other document(s)
 ( pre-AIA 37
 CFR 1.76(d)(1) ). The information in the application data
 sheet will also govern when inconsistent with the information supplied at any time
 in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International
 Request Form, Patent Law Treaty Model International Request for Recordation of
 Change in Name or Address Form, or Patent Law Treaty Model International Request
 for Recordation of Change in Applicant or Owner Form.
 

 If an application is filed with an application data sheet
 improperly identifying the residence of one of the inventors, inventor B, and an
 executed pre-AIA
 37 CFR 1.63 declaration setting forth the correct but
 different residence of inventor B, the Office will capture the residence of
 inventor B found in the application data sheet as the residence of B, and include
 that information in the filing receipt. If applicant desires correction of the
 residence, applicant should submit a supplemental application data sheet under
 pre-AIA 37
 CFR 1.76(c) , with the name of inventor B and the corrected
 residence for inventor B. 
 

 Pursuant to pre-AIA 37 CFR 1.76(d)(3) , the
 oath or declaration under pre-AIA 37 CFR 1.63 or
 pre-AIA 37
 CFR 1.67 governs inconsistencies with the application data
 sheet in the naming of inventors and setting forth their citizenship. If different
 inventors are listed in the application data sheet than are named in the oath or
 declaration for the application, the inventors, named in the oath or declaration,
 are considered to be the inventors named in the patent application. See
 pre-AIA 37
 CFR 1.76(d)(3) . Any change in the inventorship set forth in
 the oath or declaration under pre-AIA 37 CFR 1.63 must be by
 way of a request under AIA 37 CFR 1.48(a) 
 notwithstanding identification of the correct inventive entity in an application
 data sheet or supplemental application data sheet. Similarly, if the oath or
 declaration under pre-AIA 37 CFR 1.63 
 incorrectly sets forth the citizenship of one of the inventors, that inventor must
 submit a supplemental oath or declaration under pre-AIA 37 CFR
 1.67 with the correct citizenship notwithstanding the
 correct identification of the citizenship in an application data sheet or
 supplemental application data sheet. If the spelling of the inventor’s name is
 incorrect, a request under 37 CFR 1.48(f) is required.
 See MPEP §§ 602.01(c)(2) and
 602.08(b) .
 

 The Office will rely upon information supplied in the application
 data sheet over an oath or declaration to capture the data even where the type of
 information supplied (citizenship, inventorship) is governed by the oath or
 declaration according to statute ( pre-AIA 35 U.S.C. 115 ) or
 other rule ( pre-AIA 37 CFR 1.41(a)(1) ). Where the oath or declaration
 under 37 CFR
 1.63 or pre-AIA 37 CFR 1.67 contains
 the correct information regarding inventors or their citizenship and the
 application data sheet does not, even though the oath or declaration governs
 pursuant to pre-AIA 37 CFR 1.76(d)(3) , the information in the
 application data sheet must be corrected by submission of a request for correction
 and a supplemental application data sheet. If the spelling of the inventor’s name
 is incorrect, a request under 37 CFR 1.48(f) is required.
 See MPEP §§ 602.01(c)(2) and
 602.08(b) .
 

 If an application is filed with an application data sheet
 correctly setting forth the citizenship of inventor B, and an executed
 pre-AIA 37
 CFR 1.63 declaration setting forth a different incorrect
 citizenship of inventor B, the Office will capture the citizenship of inventor B
 found in the application data sheet. Applicant, however, must submit a
 supplemental oath or declaration under pre-AIA 37 CFR 1.67 by
 inventor B setting forth the correct citizenship even though it appears correctly
 in the application data sheet. A supplemental application data sheet cannot be
 used to correct the citizenship error in the oath or declaration. If, however, the
 error is one of residence, no change would be required ( pre-AIA 37 CFR
 1.76(d)(2) ).
 

 IV. ADDITIONAL INFORMATION As to the submission of class/subclass information in the
 application data sheet, the Office notes that there is a distinction between
 permitting applicants to aid in the identification of the appropriate Art Unit to
 examine the application and requiring the Office to always honor such
 identification/request, which could lead to misuse by some applicants of forum
 shopping. Even when an applicant’s identification of an Art Unit is appropriate,
 internal staffing/workload requirements may dictate that the application be
 handled by another Art Unit qualified to do so, particularly when the art or
 claims encompass the areas of expertise of more than one Art Unit.
 

 If the applicant is not an inventor, the applicant information
 should also include the applicant’s authority to apply for the patent on behalf of
 the inventor (see pre-AIA 37 CFR 1.42 ,
 1.43 and 1.47 ). For example, if the
 inventor is deceased or legally incapacitated, the applicant should include “Legal
 Representative” as the authority. Similarly, if a petition under pre-AIA 37 CFR
 1.47(b) is filed, the applicant’s authority would be “Party
 in Interest under 35 U.S.C. 118 .” If the
 application is filed by the Administrator of NASA, the applicant’s authority would
 be “Government Property Interest.”
 

 The correspondence information may be indicated by
 reference to a Customer Number to which correspondence is to be directed.
 

 Effective December 18, 2013 for all applications no
 matter when filed, 37 CFR 1.76 was amended by
 adding new paragraphs (f) and (g) to permit the use of Patent Law Treaty Model
 International Forms as appropriate or the Patent Cooperation Treaty Request Form
 in lieu of an application data sheet under 37 CFR 1.76 . See
 MPEP
 § 601.05(a) , subsection IV, for more information.
 

 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 601-Content of Provisional and Nonprovisional Applications 
 601.01-Complete Application 
 601.01(a)-Nonprovisional Applications Filed Under 35 U.S.C. 111(a) 

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

 601.01(c)-Conversion to or from a Provisional Application 

 601.01(d)-Application Filed Without All Pages of Specification 

 601.01(e)-Nonprovisional Application Filed Without at Least One Claim 

 601.01(f)-Applications Filed Without Drawings 

 601.01(g)-Applications Filed Without All Figures of Drawings 

 
 

 601.02-Power of Attorney 

 601.03-Correspondence Address 
 601.03(a)-Change of Correspondence Address in Applications Filed On or After September 16, 2012 

 601.03(b)-Change of Correspondence Address in Applications Filed Before September 16, 2012 

 
 

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

 601.05-Bibliographic Information - Application Data Sheet (ADS) 
 601.05(a)-Application Data Sheet (ADS) -- Application Filed On or After September 16, 2012 

 601.05(b)-Application Data Sheet (ADS) in Application Filed Before September 16, 2012 

 
 

 
 

 602-Oaths and Declarations 
 602.01-Naming the Inventor; Inventor's Oath or Declaration 
 602.01(a)-Inventor’s Oath or Declaration in Application Filed On or After September 16, 2012 

 602.01(b)-Inventor’s Oath or Declaration in Application Filed Before September 16, 2012 

 602.01(c)-Correction of Inventorship, Name of Inventor, and Order of Names in an Application 
 602.01(c)(1)-Correction of Inventorship in an Application – Request Filed On or After September 16, 2012 

 602.01(c)(2)-Correcting or Updating Inventor Name 37 CFR 1.48(f) – Request Filed On or After September 16, 2012 

 602.01(c)(3)-[Reserved] 

 
 

 
 

 602.02-New Oath or Substitute for Original 

 602.03-Office Finds the Inventor’s Oath or Declaration Defective 

 602.04-Foreign Executed Oath 

 602.05-Oath or Declaration in Continuing Applications 
 602.05(a)-Oath or Declaration in Continuing Applications Filed On or After September 16, 2012 

 602.05(b)-Oath or Declaration in Continuing Applications Filed Before September 16, 2012 

 
 

 602.06-Non-English Oath or Declaration 

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

 602.08-Inventor and Application Information 
 602.08(a)-Inventor Bibliographic Information 

 602.08(b)-Inventor Signature and Name 

 602.08(c)-Identification of Application 

 
 

 602.09-Joint Inventors 

 
 

 603-Supplemental Oath or Declaration 
 603.01-Supplemental Oath or Declaration Filed After Allowance 

 
 

 604-Substitute Statements 

 605-Applicant 
 605.01-Applicant for Application filed on or after September 16, 2012 

 605.02-Applicant for Application Filed Before September 16, 2012 

 
 

 606-Title of Invention 
 606.01-Examiner May Require Change in Title 

 
 

 607-Filing Fee 
 607.01-[Reserved] 

 607.02-Returnability of Fees 

 
 

 608-Disclosure 
 608.01-Specification 
 608.01(a)-Arrangement of Application 

 608.01(b)-Abstract of the Disclosure 

 608.01(c)-Background of the Invention 

 608.01(d)-Brief Summary of Invention 

 608.01(e)-[Reserved] 

 608.01(f)-Brief Description of Drawings 

 608.01(g)-Detailed Description of Invention 

 608.01(h)-Mode of Operation of Invention 

 608.01(i)-Claims 

 608.01(j)-Numbering of Claims 

 608.01(k)-Statutory Requirement of Claims 

 608.01(l)-Claims Present on the Application Filing Date 

 608.01(m)-Form of Claims 

 608.01(n)-Dependent Claims 

 608.01(o)-Basis for Claim Terminology in Description 

 608.01(p)-Completeness of Specification 

 608.01(q)-Substitute or Rewritten Specification 

 608.01(r)-Derogatory Remarks About Prior Art in Specification 

 608.01(s)-Restoration of Canceled Matter 

 608.01(t)-Use in Subsequent Application 

 608.01(u)-[Reserved] 

 608.01(v)-Marks Used in Commerce and Trade Names 

 608.01(w)-Copyright and Mask Work Notices 

 
 

 608.02-Drawing 
 608.02(a)-New Drawing — When Replacement is Required Before Examination 

 608.02(b)-Acceptability of Drawings 

 608.02(c)-Location of Drawings 

 608.02(d)-Complete Illustration in Drawings 

 608.02(e)-Examiner Determines Completeness and Consistency of Drawings 

 608.02(f)-Modifications in Drawings 

 608.02(g)-Illustration of Prior Art 

 608.02(h)-Replacement Drawings 

 608.02(i)-Transfer of Drawings From Prior Applications 

 608.02(j) - 608.02(o)-[Reserved] 

 608.02(p)-Correction of Drawings 

 608.02(q) - 608.02(s)-[Reserved] 

 608.02(t)-Cancelation of Figures 

 608.02(u)-[Reserved] 

 608.02(v)-Drawing Changes Which Require Annotated Sheets 

 608.02(w)-Drawing Changes Which May Be Made Without Applicant’s Annotated Sheets 

 608.02(x)-Drawing Corrections or Changes Accepted Unless Notified Otherwise 

 608.02(y)-Return of Drawing 

 608.02(z)-Allowable Applications Needing Drawing Corrections or Corrected Drawings 

 
 

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

 
 

 608.04-New Matter 
 608.04(a)-Matter Not Present in Specification, Claims, or Drawings on the Application Filing Date 

 608.04(b)-New Matter by Preliminary Amendment 

 608.04(c)-Review of Examiner’s Holding of New Matter 

 
 

 608.05-“Sequence Listing,” “Large Tables,” or “Computer Program Listing Appendix” Submitted in ASCII Plain Text or a “Sequence Listing
 XML” Submitted as XML File Text 
 608.05(a)-Submission of a “Computer Program Listing Appendix” 

 608.05(b)-ASCII Plain Text Submissions of “Large Tables” and Treatment of Lengthy Tables in a Specification for Patents and Patent Application
 Publications 

 608.05(c)-Submissions of Biological Sequence Listings 

 
 

 
 

 609-Information Disclosure Statement 
 609.01-Examiner Checklist for Information Disclosure Statements 

 609.02-Information Disclosure Statements in Continued Examinations or Continuing Applications 

 609.03-Information Disclosure Statements in National Stage Applications 

 609.04-Content and Timing Requirements for an Information Disclosure Statement 
 609.04(a)-Content Requirements for an Information Disclosure Statement 

 609.04(b)-Timing Requirements for an Information Disclosure Statement 

 
 

 609.05-Examiner Handling of Information Disclosure Statements 
 609.05(a)-Noncomplying Information Disclosure Statements 

 609.05(b)-Complying Information Disclosure Statements 

 609.05(c)-Documents Submitted as Part of Applicant’s Reply to Office Action 

 
 

 609.06-Information Printed on Patent 

 609.07-IDSs Electronically Submitted (eIDS) Using Patent Center 

 609.08-Electronic Processing of Information Disclosure Statement 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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