[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.
[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.
· (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.
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.
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)).
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.
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) ).
[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<
