International design applications filed through the USPTO as an office of indirect filing are subject to payment of a transmittal fee. See 37 CFR 1.1031(a). Users are permitted to submit the transmittal fee via EFS-Web using the USPTO payment page. The USPTO will not transmit the international design application to the International Bureau if the transmittal fee has not been paid to the USPTO. See 37 CFR 1.1045. Applicants are cautioned that an international design application not received by the International Bureau within six months from the date the international design application is received by the USPTO will not be entitled to a filing date as of the date of receipt by the USPTO. See Rule 13.
Certain international design application fees payable to the International Bureau may be paid through the USPTO as an office of indirect filing, provided such fees are paid no later than the date of payment of the transmittal fee. See 37 CFR 1.1031(c). Applicants are not required to pay such fees through the USPTO but rather may pay such fees directly to the International Bureau. Furthermore, any payment of such fees through the USPTO must be in U.S. dollars. Because all payments made to the International Bureau must be in Swiss currency, the U.S. dollar amount collected may, when converted to Swiss currency, be different than the required Swiss currency amount. Accordingly, applicants are cautioned that paying such fees through the USPTO may still result in a requirement by the International Bureau to pay additional amounts where the conversion from U.S. dollars to Swiss currency results in the International Bureau receiving less than the prescribed amounts. See 37 CFR 1.1031(d)
International fees payable to WIPO include the prescribed fees set forth under Rule 12(1) (i.e., the basic fee, standard designation fee(s), individual designation fee(s), and publication fee) and Rule 11(2) (fee for a description exceeding 100 words). The "Calculate Fees" screen of EFS-Web does not provide for individual selection of these fees but rather provides for input of one lump sum in Swiss francs. The screen includes a link to the WIPO Hague System Fee Calculator (www.wipo.int/hague/en/fees/calculator.jsp ) where users can input the appropriate data concerning their international design applications, and the WIPO Fee Calculator will determine the total amount of fees required in Swiss francs. Users can then copy and paste this amount into the "International Fees Payable to WIPO (CHF)" field of the EFS-Web Calculate Fees screen, and EFS-Web will calculate the U.S. dollar amount based on current exchange rates. EFS-Web will only permit payment of the international fees that are payable to WIPO until 12 midnight Eastern Time of the date of payment of the transmittal fee required under 37 CFR 1.1031(a).
In accordance with the requirements of this framework, only registered users may file follow-on submissions via EFS-Web in international design applications.
Where an international design application was filed with the USPTO as an office of indirect filing, the USPTO will generally not forward communications to the International Bureau received after transmittal of the application to the International Bureau has been effected. Thus, for example, where the International Bureau has sent an invitation requiring compliance with a requirement under the Hague Agreement, the applicant must file any reply to that invitation directly with the International Bureau to avoid abandonment or other loss of rights under the treaty. See 37 CFR 1.1045.
The available document descriptions and fees that may be paid through EFS-Web will differ depending on the stage of processing of the international design application. After transmittal of the international design application to the International Bureau has occurred, the document descriptions and fees that may be paid through EFS-Web include those that would be relevant for U.S. national processing and examination. Follow-on submissions filed after transmittal of the international design application to the International Bureau but prior to WIPO publication of the international design application designating the United States will generally be presumed to have been intended for consideration by the USPTO acting as an examining office for the application. Accordingly, action by the Office on any such submission will generally be taken after receipt of the WIPO publication of the international design application designating the United States.
No follow-on submission or fee payment is required from the applicant to initiate examination of an international design application that designates the United States. Upon receipt by the Office of the WIPO publication of an international design application designating the United States, the Office will prepare the application file for examination. Registered users may, in accordance with this framework, file follow-on submissions in the international design application via EFS-Web relevant to U.S. national processing and examination. Reproductions amended pursuant to 37 CFR 1.121 may be submitted via EFS-Web as either PDF or JPEG electronic files. Any such JPEG file must be attached to the EFS-Web submission using the "Attach JPEG Reproductions" section of the "Attach Documents" EFS-Web screen. See subsection L.3, above, for JPEG file size limits and subsection L.4, above, for the limit on the number of JPEG files that may be attached in one submission.
· (a) It is desirable that all parts of the complete application be deposited in the Office together; otherwise, a letter must accompany each part, accurately and clearly connecting it with the other parts of the application. See § 1.53(f) and (g) with regard to completion of an application.
· (b) Applicant will be informed of the application number and filing date by a filing receipt, unless the application is an application filed under § 1.53(d). A letter limited to a request for a filing receipt may be signed by a juristic applicant or patent owner.
Application numbers consisting of a series code and a serial number are assigned by the Office of Patent Application Processing (OPAP) immediately after mail has been opened. If an application is filed using the USPTO patent electronic filing system, EFS-Web provides an Acknowledgement Receipt that contains a time and date stamp, an application number and a confirmation number.
The following series codes are assigned to the applications identified below:
· (A) 01/ - 16/ - for nonprovisional applications (utility, plant, and reissue), during the following time periods:
· 01 –1925 to 1934,
· 02 – 1935 to 1947,
· 03 – 1948 to 1959,
· 04 – 1960 to 1969,
· 05 – 1970 to 1978,
· 06 – 1979 to 1986,
· 07 – 1987 to 1992,
· 08 – 1993 to 1997,
· 09 – 1998 to Nov. 2001,
· 10 – Dec. 2001 to Nov. 2004,
· 11 – Dec. 2004 to Dec. 2007,
· 12 – Dec. 2007 to Mar. 2011,
· 13 – Dec. 2010 to Aug. 2013,
· 14 – Aug. 2013 to July 2016,
· 15 - Jan. 2016 to June 2018, and
· 16 - June 2018 to present.
· (B) 29/ - for design applications;
· (C) 35/ - for international design applications;
· (D) 60/, 61/, and 62/ - for provisional applications;
· (E) 90/ - for ex parte reexamination proceedings;
· (F) 95/ - for inter partes reexamination proceedings; and
· (G) 96/ - for supplemental examination proceedings and resulting ex parte reexamination proceedings.
If a self-addressed postcard is submitted with a patent application, that postcard will be provided with both the receipt date and application number prior to returning it to the addressee. The application number identified on such a postcard receipt is merely the preliminary assignment of an application number to the application, and should not be relied upon (e.g., with respect to foreign filings) as necessarily representing the application number assigned to such application. See 37 CFR 1.53(b).
The identifying data on the postcard should include:
· (A) inventor’s name(s);
· (B) title of invention;
· (C) number of pages of specification, claims (for nonprovisional applications), and sheets of drawing;
· (D) whether the inventor's oath or declaration is included;
· (E) a list of any additional forms included with the application (e.g., application transmittal form, application data sheet, fee transmittal form, and/or provisional application cover sheet); and
· (F) amount and manner of paying the fee.
A return postcard should be attached to each patent application for which a receipt is desired.
It is important that the return postcard itemize all of the components of the application. If the postcard does not itemize each of the components of the application, it will not serve as evidence that any component which was not itemized was received by the United States Patent and Trademark Office (USPTO). See subsection III, below, for additional information pertaining to return postcards. It should be recognized that the identification of an application by application number does not necessarily signify that the USPTO has accepted the application as complete (37 CFR 1.53(a) ).
For applications filed via EFS-Web and Patent Center, after the Office receives a successful submission, an Electronic Acknowledgement Receipt is sent to the person filing the application. The acknowledgment receipt contains the "receipt date," the time the correspondence was received at the Office (not the local time at the submitter's location), and a full listing of the correspondence submitted. The Electronic Acknowledgement Receipt is the electronic equivalent of a postcard receipt. See MPEP § 502.05.
OPAP mails a filing receipt to the attorney or agent, if any, otherwise to the applicant, at the correspondence address of record for each application filed which meets the minimum requirements to receive a filing date. The filing receipt includes the application number, filing date, a confirmation number, a suggested class in the U.S. Patent Classification System (see MPEP § 902.01), and the number of an art unit where the application is likely to be examined. The filing receipt also includes other information about the application as applicable, such as continuing data, national stage data, foreign priority data, foreign filing license data, entity status information, and the date the Office anticipates publishing the application under 35 U.S.C. 122(b). The filing receipt represents the official assignment by the USPTO of a specific application number and confirmation number to a particular application. See 37 CFR 1.54(b). The application number officially assigned to an application on the filing receipt may differ from the application number identified on a postcard receipt submitted with such application, and, as between inconsistent filing receipts and postcard receipts, the application number on the filing receipt is controlling.
Applicants are encouraged to check their filing receipts for accuracy with particular attention to the inventor’s and applicant’s names, benefit and priority claims, and whether or not a nonpublication request, if submitted, was recognized .
The confirmation number is a four-digit number that is assigned to each newly filed application. The confirmation number, in combination with the application number, is used to verify the accuracy of the application number placed on correspondence filed with the Office to avoid misidentification of an application due to a transposition error in the application number. The confirmation number may be found in the upper left-hand corner of the filing receipt. The confirmation number will also be available through the Patent Application Information Retrieval (PAIR) system. The Office includes the application’s confirmation number (in addition to the application number) on the cover sheet accompanying Office actions and on filing receipts. The confirmation number must be used when submitting an electronic filing system (EFS-Web or Patent Center) copy of the application for publication to verify that the application number correctly identifies the application for which a copy is being submitted for publication. The Office also recommends that applicants include the application’s confirmation number (in addition to the application number) on all correspondence submitted to the Office concerning the application.
A continued prosecution application (CPA) filed under 37 CFR 1.53(d) (design applications only) will be assigned the application number of the prior application for identification purposes.
A nonprovisional application, other than a CPA filed under 37 CFR 1.53(d), is entitled to a filing date as of the date of receipt of the specification, including claims, and any required drawing. See 37 CFR 1.53(b). The filing receipt will be mailed at the time a determination is made that the application meets the minimum requirements to receive a filing date. The inventor's oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506). See 37 CFR 1.53(f). If the inventor's oath or declaration, basic filing fee, and/or any required search fee and examination fee with the appropriate surcharge are not timely filed, the application will be abandoned. For original (non-reissue) applications filed on or after September 16, 2012, the filing of the inventor’s oath or declaration may be postponed until the date the issue fee is paid if an application data sheet in accordance with 37 CFR 1.76 is timely filed providing the required inventor information. See 35 U.S.C. 115(f) and 37 CFR 1.53(f). The surcharge required for filing the inventor’s oath or declaration after the filing date of the application, however, must be paid on filing of the application or in response to a Notice to File Missing Parts. Also, for applications filed on or after December 18, 2013, the filing of at least one claim may be postponed until the expiration of the time period set in Notice to File Missing Parts. Claim(s) and the surcharge must be filed in response to the Notice to File Missing Parts. See MPEP § 506.
A provisional application filed on or after December 18, 2013 is entitled to a filing date as of the date of receipt of the specification, with or without claims, in the Office (37 CFR 1.53(c) ); a provisional application filed before December 18, 2013 must also include any required drawings to be entitled to a filing date (pre-PLT (AIA) 37 CFR 1.53 (c) ). See also MPEP § 608.02, subsection I. See 37 CFR 1.53(c). A cover sheet (37 CFR 1.51(c)(1) ), which may be an application data sheet (37 CFR 1.76 ) or a cover letter, identifying the application as a provisional application is required to prevent the provisional application from being treated as a nonprovisional application. 37 CFR 1.53(c)(1).
Each application which meets the minimum requirements to receive a filing date is given a filing date. It is important, when referring to application files, to identify them by their filing dates and confirmation numbers as well as by application numbers.
Attorney docket numbers must be limited to a maximum of 25 characters to prevent truncation. The USPTO system data base allows a maximum of 25 characters for the attorney docket numbers. Spaces, slashes, and hyphens will no longer be included in the entered docket number on the official filing receipt. In an application where CASE or NAVY-CASE appears before the first character in the docket number, only the characters after CASE or NAVY-CASE will be entered on the official filing receipt.
The application papers are processed by OPAP and added to the Office’s Image File Wrapper (IFW) system.
Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested. See 37 CFR 1.59. Accordingly, applicants must be careful not to file applications which are not intended to be filed, e.g., duplicates of applications already filed. Note that 37 CFR 1.26(a) provides that a change of purpose after the payment of a fee, as when a party desires to withdraw the filing of a patent application for which the fee was paid, will not entitle the party to a refund of such fee. See MPEP § 607.02.
If a submitter desires a receipt for any item (e.g., paper or fee) filed in the USPTO by means other than the USPTO patent electronic filing system, it may be obtained by enclosing with the paper a self-addressed postcard specifically identifying the item. See subsection I, above, and MPEP § 502.05 for Electronic Acknowledgment Receipts. To ensure the receipt of return receipt postcards, users must either: (A) purchase already stamped postcards from the United States Postal Service (USPS) or affix postage stamps to their postcards; or (B) if a postage meter is used, ensure that the meter postmark does not show the date. Any return receipt postcard containing a dated meter postmark may not be delivered by the USPS to the address provided on the postcard. Users are reminded that they are solely responsible for placing the proper postage on self-addressed postcards that are submitted to the USPTO for the purpose of obtaining a receipt for correspondence being filed in the USPTO. Users should check with the USPS regarding postage and what size cards are acceptable to the USPS. Any return receipt postcard that does not contain sufficient postage or is not acceptable may not be delivered by the USPS to the address provided on the postcard, and, if returned to the USPTO, may be discarded.
The USPTO will stamp the receipt date on the postcard and place it in the outgoing mail. A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.
The identifying data on the postcard should be so complete as to clearly identify the item for which a receipt is requested. For example, the postcard should identify the inventor’s name, application number (if known), confirmation number (if known), filing date, interference number, title of the invention, etc. The postcard should also identify the type of paper being filed, e.g., new application, affidavit, amendment, notice of appeal, appeal brief, drawings, fees, motions, supplemental oath or declaration, petition, etc., and the number of pages being submitted. If a new application is being filed, all parts of the application being submitted should be separately listed on the postcard, e.g., the number of pages of specification (including written description, claims and abstract), number of claims, number of sheets of drawings, number of pages of oath/declaration, number of pages of cover sheet (provisional application).
The postcard receipt will not serve as prima facie evidence of receipt of any item which is not adequately itemized on the postcard. For example, merely listing on the postcard "a complete application" or "patent application" will not serve as a proper receipt for each of the required components of an application (e.g., specification (including claims), drawings (if necessary), oath or declaration and the application filing fee) or missing portions (e.g., pages, sheets of drawings) of an application if one of the components or portion of a component is found to be missing by the USPTO. Each separate component should be specifically and properly itemized on the postcard. Furthermore, merely incorporating by reference in the postcard receipt, the items listed in a transmittal letter will not serve as prima facie evidence of receipt of those items.
The person receiving the item(s) in the USPTO will check the listing on the postcard against the item(s) being filed to be sure they are properly identified and that all the items listed on the postcard are presently being submitted to the USPTO. If any of the items listed on the postcard are not being submitted to the USPTO, those items will be crossed off and the postcard initialed by the person receiving the items.
Upon return of a postcard receipt from the USPTO, the postcard receipt should be promptly reviewed by the person who filed the items to ensure that every item specifically denoted on the postcard was received by the USPTO. If the postcard receipt has been annotated to indicate that a particular item denoted on the postcard was not received by the USPTO, the postcard receipt will not serve as prima facie evidence of receipt of that item in the USPTO.
The Patents Service for Time and Application Routing (PSTAR) program assigns each nonprovisional application to an examiner. Provisional applications will not be examined.
· (a) Date of receipt and Priority Mail Express® date of deposit. Correspondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:
· (1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
· (2) Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express® with the United States Postal Service.
· (3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
· (4) Correspondence may be submitted using the Office electronic filing system only in accordance with the Office electronic filing system requirements. Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
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The United States Patent and Trademark Office (Office) stamps papers and fees received through the mail (other than those submitted by Priority Mail Express® in accordance with 37 CFR 1.10 ), by facsimile, or via EFS-Web with the date of their receipt in the Office. Papers that are hand-carried to the Office will be date stamped at the Customer Service Window. See MPEP § 502. The stamp is referred to as the "Office Date" stamp.
When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.
New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2).
Similarly, correspondence submitted via the USPTO electronic filing system (EFS-Web) will be accorded a receipt date on the date the correspondence is received at the correspondence address for the Office set forth in 37 CFR 1.1 (i.e., local time in Alexandria, VA), without regard to whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See MPEP §§ 502.05 and 512.
If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the "Office Date" stamp establishes the "filing date."
· (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 provisional application under paragraph (c) of this section, is the date on which a specification, with or without claims, is received in 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, 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, 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 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 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
