Chapter 600 Parts, Form and Content of Application

Exam Impact – There will be questions on the requirements for getting a filing date for provisional and non-provisional applications, oaths and declarations, disclosure issues and IDSs. Be particularly prepared for the three or four IDS questions that are inevitable.

601 Content of Provisional and Non-provisional Applications

Every patent application must comply with certain statutory requirements, most notably the requirements of 35 USC 112, which require that every patent application must contain:

1. A specification complying with 35 USC 112;

2. A drawing if necessary to understand the invention; and

3. A filing fee.

Applications come in two types – provisional and non-provisional. A non-provisional is a garden-variety patent application that is filed pursuant to 37 CFR §1.53(b), and most likely issues in due course to provide its owners with the right to exclude others. A provisional application is a recently created species filed pursuant to 37 CFR §1.53(c) that exists only to hold a place in line, to provide priority to a non-provisional application that replaces it within one year. The provisional has to be replaced within one year because it automatically expires at the end of one year from filing. A provisional has a very uneventful, even boring year of life in that nothing happens to it. It isn’t examined, it has no claims, and nothing gets filed. It just sits there, and then it dies.

An original US non-provisional application may come to be filed in one of two ways:

1. Depositing a complete set of papers as specified in 37 CFR 1.53(b); or

2. Filing an international application (PCT) that designates and enters the national stage in the United States.

The PTO recommends, but does not require, the following order in framing the specification:

1. Title of the Invention (Limited to 150 characters)

2. Cross reference to related applications

3. Statement concerning federally funded research

4. Reference to “microfiche appendix”.

5. Background of the invention

a. Field of the invention

b. Description of Related Art

6. Brief Summary of the Invention

7. Brief description of the Drawings

8. Detailed description of the invention

9. Claims (On a separate sheet)

10. Abstract (On a separate sheet and limited to 500 words)

11. Drawings

12. Sequence Listing (if any)

37 CFR §1.53 sets forth the requirements for filing a non-provisional application. Every kind of non-provisional application can be filed under 1.53(b). 1.53(d) is used only for filing a specific kind of application called a Continuing Prosecution Application, a CPA. A CPA is used for the same purpose as a Request for Continued Examination (RCE), usually to get out from under the constraints of a final rejection and continue prosecution. The same file is used for a CPA, and all of the amendments in the parent carry over into the CPA.

601.01(a) Non-provisional Application Filed Under 35 USC 111(a)

35 USC 111(a) mandates that a complete non-provisional application must include:

1. A specification as prescribed by 35 USC 112, including at least one claim;

2. A drawing if necessary to understand the invention;

3. An oath or declaration; and

4. A filing fee.

However, to obtain that all-important filing date, the minimum is a specification including at least one claim, and drawings, if necessary to understand the invention. The specification need not even be in English. The fee, the oath or declaration and any necessary translation can be filed later in response to a Notice of Missing Parts.

601.01(b) Provisional Application

35 USC 111(b) and 37 CFR §1.53(c) mandate that a complete provisional application must include:

1) A specification as prescribed by 35 USC 112, NOT including a claim

2) A drawing or drawings, if necessary to understand the invention; and

3) A filing fee

4) A cover sheet identifying:

(A) The application as a provisional;

(B) The names of the inventors,

(C) The residence of each inventor,

(D) The title of the invention,

(E) The name and registration number of any attorney or agent

(F) The docket number (optional), and

(G) The correspondence address.

35 USC 111(b) mandates that for a provisional application the minimum requirements to get a filing date are the same as for a non-provisional, except that a claim need not be present, since provisionals are in fact claimless.

The filing fee can be paid later, usually in response to a Notice of Missing Parts, with a surcharge as specified by 37 CFR §1.16(l). Similarly if the cover sheet is missing or incomplete it can be filed later, usually in response to a Notice of Missing Parts, together with the 37 CFR §1.16(l) surcharge. However, unless an application is clearly identified as a provisional application, it will be treated as a non-provisional.

If an application as filed is sufficient to get a filing date, but still incomplete, either a provisional or a non-provisional, it resides in limbo. If it is completed, it retains that original date on which the minimum was deposited, and goes on to fulfill its destiny as a provisional or non-provisional. If it is not completed, then in the words of the MPEP it is “disposed of”.

Since the application is in limbo until complete, it cannot provide priority to any continuing application. Thus, a CPA cannot be filed of a non-provisional application, until it is complete.

An application that does not have the minimum necessary to get a filing date can’t get that date until the minimum is there at the PTO. Thus, an application filed without a specification or without a drawing necessary to understand the invention will receive a Notice of Incomplete Application, indicating the filing date will be the date the missing items are filed.

601.01(D) Application Filed Without All Pages Of Specification

If an application is filed with drawings, a specification that appears to comply with the written description requirement and, in the case of a non-provisional, a claim, but one or more pages or drawings are missing, the PTO sends a Notice of Omitted Items. This Notice indicates that the papers have been accorded a filing date. The applicant now has two choices:

1) Do nothing, in which case the application will go forward with the pages filed

and with the filing date accorded.

Of course, any amendments to the specification are limited to those that are NOT new matter. In the case of a non-provisional application, an amendment must be filed to correct pagination, and delete any description of a missing drawing.

2) File a petition, within an unextendable two months from the date of the Notice,

requesting that the filing date be reset to the date the petition is filed,

accompanied by the missing pages, and the fee specified in 37 CFR §1.17(i).

(1.17(q) for provisionals).

The same Notice of Omitted Items and possibilities exists when an application is filed with less than all the sheets of drawings.

601.01(E) Non-Provisional Filed Without At Least One Claim

Almost every mistake made by a patent attorney during prosecution can be fixed, by paying the PTO money to revive or forgive, or by filing a continuing application. Such a mistake is not entirely without consequences since it will likely reduce the term of the patent and will likely also reduce any PTA. However, the three most ruinous mistakes an attorney can make in dealing with a patent application are:

1. Fail to get an application to the PTO properly prior to a bar date;

2. Fail to get the minimum papers to the PTO timely so no filing date is awarded and the application is barred; and

3. Fail to meet any one of the disclosure requirements of the first paragraph of 35 USC 112.

In the first two of these circumstances, the application does not get a filing date and no patent can issue. In the third circumstance, the application will get a filing date, but can neither issue nor provide priority under 35 USC 120 to any continuing application.

A non-provisional application filed without a claim cannot get a filing date, but the PTO has offered an ingenious remedy – convert the application to a non-provisional that doesn’t have to have a claim. A request for conversion must be accompanied by the fee specified in 37 CFR §1.17(q).

Non-provisional Application filed with a specification as prescribed by 35 USC 112, including at least one claim, and drawings if necessary to understand the invention Gets a filing date, and oath, translation and fee can be paid later with surcharge

Non-provisional Application filed without either a specification as prescribed by 35 USC 112, including at least one claim, or drawings if necessary to understand the invention Gets Notice of Incomplete Application and gets filing date when minimum papers are present at PTO

Non-provisional Application filed with a specification as prescribed by 35 USC 112, including at least one claim, and drawings if necessary to understand the invention, but with one or more pages or drawings omitted Gets Notice of Omitted items providing two months to submit missing page(s) and request new filing date, or do nothing to keep original filing date

Provisional Application filed with a specification as prescribed by 35 USC 112, and drawings if necessary to understand the invention Gets a filing date, and translation, cover sheet and fee can be paid later with surcharge

Provisional Application filed with a specification as prescribed by 35 USC 112, and drawings if necessary to understand the invention, but with one or more pages or drawings omitted Gets Notice of Omitted items providing two months to submit missing page(s) and request new filing date, or do nothing to keep original filing date

Provisional Application filed without either a specification as prescribed by 35 USC 112, or drawings if necessary to understand the invention Gets Notice of Incomplete Application and gets filing date when minimum papers are present at PTO

Non-provisional Application filed with a specification as prescribed by 35 USC 112, BUT NO claim, and drawings if necessary to understand the invention Can be converted into provisional and filing date preserved

601.01(f) Applications Filed Without Drawings

An application that has at least one method claim is treated by the PTO as an application for which a drawing is not necessary. The PTO references the following additional situations where drawings are not usually necessary:

1. Coated Articles or Processes;

2. Articles made from a Particular Material or Composition;

3. Laminated Structures; or

4. Articles, apparatus or systems where the sole distinguishing feature is the presence of a particular material.

601 Original Oath or Declaration

In every non-provisional application an oath or declaration signed by each and every one of the inventors or someone empowered to sign on their behalf must be filed. The only exception is a reissue application where the claims are not being broadened, which can be signed by an owner. The only difference between an oath and a declaration is that an oath must be sworn before a person empowered to take oaths and a declaration simply requires the signor to state that he or she knows the consequences of lying. There is no situation where an oath, but not a declaration, or vice versa, can be used. No one in practice uses oaths anymore, because declarations are much more convenient.

The oath or declaration must:

1) Be executed;

2) Identify the specification to which it is directed;

3) Identify each inventor by full name (no P.J. O’Rourke, unless the initials stand for nothing) and his or her citizenship;

4) State whether the inventor is sole or joint;

5) State that for each person signing, that person:

a) Has reviewed and understand the contents of the specification, including the claims, as amended by any amendment specifically referred to in the oath or declaration;

b) Believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter claimed; and

c) Acknowledges the duty to disclose to the office all information known to the person to be material to patentability.

Either the oath or declaration or an application data sheet as specified in 37 CFR §1.76 must provide:

1) The mailing address; and

2) The residence of the inventors.

Foreign priority information may be provided in the oath or declaration or on the application data sheet pursuant to 37 CFR §1.76.

Submission of a date sheet is voluntary, but if submitted sets forth basic bibliographic data namely:

1) Applicant information, i.e. names, residences, mailing addresses and citizenship;

2) Correspondence information;

3) Application information, i.e. the title, suggested classification, the number of drawings, any secrecy order;

4) Representative information identifying any attorneys;

5) Domestic priority information;

6) Foreign priority information; and

7) Assignee information.

Supplemental application data sheets may be submitted where information changes.

There is no minimum age requirement to sign an oath or declaration, only competency to understand what is being signed.

The inventors do not have to each sign the same oath or declaration, i.e. what each signs can be on a separate paper.

602 Supplemental Oath or Declaration

An oath cannot be amended; it can only be replaced.

Supplemental oaths or declarations are used in two situations:

1) Where the executed oath filed was defective in some way and must be replaced; and

2) Where subject matter not initially claimed is claimed after filing.

If the deficiency in the declaration relates to less than all the inventors, only the inventors pertaining to the deficiency need sign a supplemental declaration or oath.

The oath or declaration filed with the application extends to what is initially claimed. Sometimes an application has disclosure that is not initially claimed, but is claimed later. In that instance a supplemental declaration as provided in 37 CFR §1.67 must be filed. No fee is required and the declaration may be filed as a matter of right.

605.04(c) Inventor Changes Name

To change an inventor’s name on an application, a petition under 37 CFR §1.182 must be submitted with an appropriate fee and an affidavit signed with both names and setting forth how the name change was effected, or a certified court order. Typically, the need to change a name arises when a man or women takes his or her spouse’s name in whole or part.

605.04(f) Order of Names

While the order of the names is of no legal significance, a petition can be filed under 37 CFR §1.182 signed by the attorney of record or all inventors to change the order. The boss always wants to be listed first.

608.01 Specification

The purpose of the specification is to provide a description of the invention satisfying the requirements of 35 USC 112. The following rules apply:

1. The specification may contain chemical and mathematical formulas, but no drawings of flow charts. 37 CFR §1.58

2. 37 CFR 1.52(c) forbids alterations to the specification after execution and before filing, except interlineations that are initialed by the inventors.

3. All patent applicants should use the metric system.

4. A translation of an specification filed in a non-English language must be:

a. Literal;

b. Accompanied by a statement signed by the translator that the translation is accurate;

c. Include a signed request from the applicant or his or her attorney or agent asking that the English translation be used as the copy for examination; and

d. If the translation is not in idiomatic English, a preliminary amendment making the necessary changes without new matter.

5. Hyper links are not to be included in the text.