Where the title is not descriptive of the invention claimed, the examiner should require the substitution of a new title that is clearly indicative of the invention to which the claims are directed. Form paragraphs 6.11 and 6.11.01 may be used.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
If a change in the title of the invention is being suggested by the examiner, follow with form paragraph 6.11.01.
The following title is suggested: "[1]"
This may result in slightly longer titles, but the loss in brevity of title will be more than offset by the gain in its informative value in indexing, classifying, searching, etc. If a satisfactory title is not supplied by the applicant, the examiner may, at the time of allowance, change the title by an examiner’s amendment. See MPEP § 1302.04(a). When the Technology Center (TC) technical support staff prepares the application for issue and sees that the title has been changed, the TC technical support staff will make the required change in the Office computer record systems.
Patent application filing fees are set in accordance with 35 U.S.C. 41 and the Fee Setting Authority set forth in section 10 of Public Law 112-29, September 16, 2011 (the Leahy-Smith America Invents Act). The fee amounts are available from the USPTO’s website at www.uspto.gov/Fees.
For nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 8, 2004 (including reissue applications), the following fees are required: basic filing fee as set forth in 37 CFR 1.16(a), (b), (c) or (e); search fee as set forth in 37 CFR 1.16(k), (l), (m), or (n); examination fee as set forth in 37 CFR 1.16(o),(p), (q), or (r) ; application size fee as set forth in 37 CFR 1.16(s), if applicable (see subsection II. below); excess claims fees as set forth in 37 CFR 1.16(h), (i), or (j), if applicable (see subsection III. below); and non-electronic filing fee as set forth in 37 CFR 1.16(t), if applicable (see subsection IV. below).
The basic filing, search and examination fees are due on filing of the nonprovisional application under 35 U.S.C. 111(a). These fees may be paid on a date later than the filing date of the application provided they are paid within the time period set forth in 37 CFR 1.53(f) and include the surcharge set forth in 37 CFR 1.16(f).
For provisional applications filed under 35 U.S.C. 111(b), the basic filing fee set forth in 37 CFR 1.16(d) is required. The basic filing fee is due on filing of the provisional application, but may be paid later, if paid within the time period set forth in 37 CFR 1.53(g) and accompanied by payment of a surcharge as set forth in 37 CFR 1.16(g).
For international applications entering the national stage under 35 U.S.C. 371, see 37 CFR 1.492 for the required fees. See also MPEP § 1893.01(c). For international design applications under 35 U.S.C. 385, see 37 CFR 1.1031 for the required fees.
See also MPEP § 1415 for reissue application fees.
The application size fee set forth in 37 CFR 1.16(s) applies to any application (including any provisional applications and any reissue applications) filed under 35 U.S.C. 111 the specification (including claims) and drawings of which exceed 100 sheets of paper. The calculation of the application size fee required excludes any American Standard Code for Information Interchange (ASCII) plain text file or any eXtensible Markup Language XML file (as applicable) submitted on read-only optical disc or via the USPTO patent electronic filing system for any "Sequence Listing," any computer readable form (CRF) of a "Sequence Listing," any "Sequence Listing XML," or a "Computer Program Listing Appendix." See 37 CFR 1.52(f). The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. A preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application. See MPEP § 714.01(e), subsection II. Thus, the Office will count the pages of a preliminary amendment present on the filing date of the application, including multiple sets of drawings or multiple sets of a specification, e.g., clean and marked-up versions, in determining the application size fee required. Accordingly, the Office does not recommend filing a substitute specification or multiple sets of drawings with the initial filing of the application. The Office will not count the sheets of paper making up any English translation of a non-English language specification if submitted with the application on filing. However, if the originally-filed application papers did not comply with 37 CFR 1.52, any papers filed to comply with 37 CFR 1.52 (if the page count of such papers is larger than the page count of the initial submission) will be counted for the purpose of determining the application size fee due, in place of the originally-filed specification and drawings. Any "Sequence Listing" or CRF of a "Sequence Listing" in compliance with 37 CFR 1.821(c) or (e) and any "Computer Program Listing Appendix" in compliance with 37 CFR 1.96(c) submitted on a read-only optical disc under 37 CFR 1.52(e) or submitted in an ASCII plain text file via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s). Any "Sequence Listing XML" on a read-only optical disc or submitted via the USPTO patent electronic filing system in compliance with 37 CFR 1.831(a) will be excluded when determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(1) and (2).
For purposes of determining the application size fee required by 37 CFR 1.16(s), for an application component submitted in part on a read-only optical disc in compliance with 37 CFR 1.52(e), excluding any ASCII plain text file or XML file (as applicable) of any "Sequence Listing" or CRF of a "Sequence Listing" in compliance with 37 CFR 1.821(c) or (e), any "Computer Program Listing Appendix" in compliance with 37 CFR 1.96(c), or any "Sequence Listing XML" in compliance with 37 CFR 1.831(a), each three kilobytes of content submitted on a read-only optical disc shall be counted as a sheet of paper. See 37 CFR 1.52(f)(1).
The paper size equivalent of the specification (including claims) and drawings of an application submitted via the USPTO patent electronic filing system will be considered to be seventy five percent of the number of sheets of paper present in the specification (including claims) and drawings of the application when entered into the Office file wrapper after being rendered by the USPTO patent electronic filing system for purposes of computing the application size fee required by 37 CFR 1.16(s). Any "Sequence Listing" or CRF of a "Sequence Listing" in compliance with 37 CFR 1.821(c) or (e) and any "Computer Program Listing Appendix" in compliance with 37 CFR 1.96(c), submitted via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s) if the listing is submitted in ASCII plain text as part of an associated file of the application. Any "Sequence Listing XML" in compliance with 37 CFR 1.831(a) submitted via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s) if the listing is submitted in XML file format as part of an associated file of the application. See 37 CFR 1.52(f)(1). "Sequence Listings" or computer program listings submitted via the USPTO patent electronic filing system in Portable Document Format (PDF) as part of the specification or as Tagged Image File Format (TIFF) drawing files would not be excluded when determining the application size fee required by 37 CFR 1.16(s).
For information on oversized submissions of a "Sequence Listing" or a "Sequence Listing XML" under 37 CFR 1.52(f)(3), see MPEP § 2422.03 et seq.
37 CFR 1.16(h) sets forth the excess claims fee for each independent claim in excess of three. 37 CFR 1.16(i) sets forth the excess claims fee for each claim (whether independent or dependent) in excess of twenty. The excess claims fees specified in 37 CFR 1.16(h) and (i) apply to any excess claims fee paid, regardless of the filing date of the application and regardless of the date on which the claim necessitating the excess claims fee payment was added to the application.
The excess claims fees specified in 37 CFR 1.16(h) and (i) also apply to all reissue applications. Under 35 U.S.C. 41(a)(2), the claims in the original patent are not taken into account in determining the excess claims fee for a reissue application. The excess claims fees specified in 37 CFR 1.16(h) and (i) are required for each independent claim in excess of three that is presented in a reissue application and for each claim (whether independent or dependent) in excess of twenty that is presented in a reissue application.
Fees for a proper multiple dependent claim are calculated based on the number of claims to which the multiple dependent claim refers, 37 CFR 1.75(c), and a separate fee is required in each application containing a proper multiple dependent claim. See 37 CFR 1.16(j). For an improper multiple dependent claim, the fee charged is that charged for a single dependent claim. See MPEP § 608.01(n) for multiple dependent claims.
For nonprovisional applications filed under 35 U.S.C. 111(a) without claims, if more than three independent claims, more than twenty total claims, or a multiple dependent claim, are presented in the application, the excess claims fee as set forth in 37 CFR 1.16(h), (i), and/or (j) is due when the excess claims are presented in the application.
Upon submission of an amendment (whether entered or not) affecting the claims, payment of fees for those claims in excess of the number previously paid for is required.
Amendments before the first action, or not filed in reply to an Office action, presenting additional claims in excess of the number already paid for, not accompanied by the full additional fee due, will not be entered in whole or in part and applicant will be so advised. Such amendments filed in reply to an Office action will be regarded as not responsive thereto and the practice set forth in MPEP § 714.03 will be followed.
The additional fees, if any, due with an amendment are calculated on the basis of the claims (total and independent) which would be present, if the amendment were entered. The amendment of a claim, unless it changes a dependent claim to an independent claim or adds to the number of claims referred to in a multiple dependent claim, and the replacement of a claim by a claim of the same type, unless it is a multiple dependent claim which refers to more prior claims, do not require any additional fees.
For purposes of determining the fee due the U.S. Patent and Trademark Office, a claim will be treated as dependent if it contains reference to one or more other claims in the application. A claim determined to be dependent by this test will be entered if the fee paid reflects this determination.
Any claim which is in dependent form but which is so worded that it, in fact, is not a proper dependent claim, as for example it does not include every limitation of the claim on which it depends, will be required to be canceled as not being a proper dependent claim; and cancellation of any further claim depending on such a dependent claim will be similarly required. The applicant may thereupon amend the claims to place them in proper dependent form, or may redraft them as independent claims, upon payment of any necessary additional fee.
After a requirement for restriction, nonelected claims will be included in determining the fees due in connection with a subsequent amendment unless such claims are canceled.
An amendment canceling claims accompanying the papers constituting the application will be effective to diminish the number of claims to be considered in calculating the filing fees to be paid. A preliminary amendment filed concurrently with a response to a Notice To File Missing Parts of Application that required the fees set forth in 37 CFR 1.16, which preliminary amendment cancels or adds claims, will be taken into account in determining the appropriate fees due in response to the Notice To File Missing Parts of Application. No refund will be made for claims being canceled in the response that have already been paid for.
The additional fees, if any, due with an amendment are required prior to any consideration of the amendment by the examiner.
Money paid in connection with the filing of a proposed amendment will not be refunded by reason of the nonentry of the amendment. However, unentered claims will not be counted when calculating the fee due in subsequent amendments.
Amendments affecting the claims cannot serve as the basis for granting any refund. See MPEP § 607.02 subsection V for refund of excess claims fees.
Excess claims fees set forth in 37 CFR 1.20(c)(3) and (c)(4) apply to excess claims that are presented during a reexamination proceeding.
Section 10(h) of Public Law 112-29, September 16, 2011 (the Leahy-Smith America Invents Act) provides that an additional fee of $400 ($200 for a small entity) shall be established for each application for an original (i.e., non-reissue) patent, except for a design, plant, or provisional application, not filed by electronic means. See 37 CFR 1.16(t) for the non-electronic fee applicable to applications under 35 U.S.C. 111(a) filed on or after November 15, 2011 other than by the USPTO patent electronic filing system. See 37 CFR 1.445(a)(1)(ii) for the non-electronic filing fee portion of the transmittal fee due in an international application filed with the USPTO as receiving Office on or after November 15, 2011.
In situations in which a payment submitted for the fees due on filing in a nonprovisional application filed under 35 U.S.C. 111(a) is insufficient and the applicant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended:
· (1) the basic filing fee (37 CFR 1.16(a), (b), (c), or (e) );
· (2) the non-electronic filing fee (37 CFR 1.16(t) );
· (3) the application size fee (37 CFR 1.16(s) );
· (4) the late filing surcharge (37 CFR 1.16(f) );
· (5) the processing fee for an application filed in a language other than English (37 CFR 1.17(i) );
· (6) the search fee (37 CFR 1.16(k), (l), (m), or (n) );
· (7) the examination fee (37 CFR 1.16(o), (p), (q), or (r) ); and
· (8) the excess claims fee (37 CFR 1.16(h), (i), and (j) ).
In situations in which a payment submitted for the fees due on filing in a provisional application filed under 35 U.S.C. 111(b) is insufficient and the applicant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended:
· (1) the basic filing fee (37 CFR 1.16(d) );
· (2) the application size fee (37 CFR 1.16(s) ); and
· (3) the late filing surcharge (37 CFR 1.16(g) ).
See also MPEP § 509.
Since the basic filing fee, search fee, and examination fee under the patent fee structure are often referred to as the "filing fee," the Office will treat a deposit account authorization to charge "the filing fee" as an authorization to charge the applicable fees under 37 CFR 1.16 (the basic filing fee, search fee, examination fee, any excess claims fee, and any application size fee) to the deposit account. The Office will also treat a deposit account authorization to charge "the basic filing fee" as an authorization to charge the applicable basic filing fee, search fee, and examination fee to the deposit account. Any deposit account authorization to charge the filing fee but not the search fee or examination fee must specifically limit the authorization by reference to one or more of paragraphs (a) through (e) of 37 CFR 1.16. See MPEP § 509.01.
*****
· (d) The Director may refund any fee paid by mistake or any amount paid in excess of that required.
*****
· (a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
· (b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph or in § 1.28(a). If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 1.25(b) ), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
· (c) If the Director decides not to institute a reexamination proceeding in response to a request for reexamination or supplemental examination, fees paid with the request for reexamination or supplemental examination will be refunded or returned in accordance with paragraphs (c)(1) through (c)(3) of this section. The reexamination requester or the patent owner who requested a supplemental examination proceeding, as appropriate, should indicate the form in which any refund should be made (e.g., by check, electronic funds transfer, credit to a deposit account). Generally, refunds will be issued in the form that the original payment was provided.
· (1) For an ex parte reexamination request, the ex parte reexamination filing fee paid by the reexamination requester, less the fee set forth in § 1.20(c)(7), will be refunded to the requester if the Director decides not to institute an ex parte reexamination proceeding.
· (2) For an inter partes reexamination request, a refund of $7,970 will be made to the reexamination requester if the Director decides not to institute an inter partes reexamination proceeding.
· (3) For a supplemental examination request, the fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2), will be returned to the patent owner who requested the supplemental examination proceeding if the Director decides not to institute a reexamination proceeding.
Under 35 U.S.C. 42(d) and 37 CFR 1.26, the Office may refund: (1) a fee paid by mistake (e.g., fee paid when no fee is required); or (2) any fee paid in excess of the amount of fee that is required. See Ex parte Grady, 59 USPQ 276, 277 (Comm’r Pat. 1943) (the statutory authorization for the refund of fees under the "by mistake" clause is applicable only to a mistake relating to the fee payment).
When an applicant or patentee takes an action "by mistake" (e.g., files an application or maintains a patent in force "by mistake"), the submission of fees required to take that action (e.g., a filing fee submitted with such application or a maintenance fee submitted for such patent) is not a "fee paid by mistake" within the meaning of 35 U.S.C. 42(d).
37 CFR 1.26(a) also 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.
All questions pertaining to the return of fees are referred to the Refunds Section of the Receipts Division of the Office of Finance. No opinions should be expressed to attorneys or applicants as to whether or not fees are returnable in particular cases. Such questions may also be treated, to the extent appropriate, in decisions on petition decided by various U.S. Patent and Trademark Office officials.
37 CFR 1.26(a) authorizes the Office to obtain the banking information necessary for making refunds by electronic funds transfer, or obtain the deposit account information to make the refund to the deposit account. If a party paying a fee or requesting a refund does not instruct the refund to be credited to a deposit account, the Office will attempt to make the refund by electronic fund transfer. The Office may (1) use the banking information on a payment instrument (e.g., a personal check) to refund an amount paid by the payment instrument in excess of that required, or (2) in other situations, require the banking information necessary for electronic funds transfer or require instructions to credit a deposit account. If it is not cost effective to require the banking information, the Office may obtain the deposit account information or simply issue any refund by treasury check.
37 CFR 1.26(a) further provides that any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. The Office will not refund a fee paid by credit card by treasury check, electronic funds transfer, or credit to a deposit account.
Any request for a refund which is not based upon subsequent entitlement to small entity status (see 37 CFR 1.28(a) ) must be filed within the two-year nonextendable time limit set forth in 37 CFR 1.26(b).
The Office treats authorizations to charge a deposit account as being received by the Office on the date of receipt as defined in 37 CFR 1.6 for purposes of refund payments under 37 CFR 1.26 and 37 CFR 1.28. Payment by authorization to charge a deposit account is treated for refund purposes the same as payments by other means (e.g., check or credit card charge authorization). Accordingly, the time period for requesting a refund of any fee paid by a deposit account begins on the date the charge authorization is received in the Office. For refund purposes: where a 37 CFR 1.8 certificate is used, the refund period will begin on the date of actual receipt (not the 37 CFR 1.8 date of mailing); where Priority Mail Express® under 37 CFR 1.10 is used, the "date accepted" on the Priority Mail Express® label will control (not the actual date of receipt by the Office). The use of payment receipt date for refund purposes has no effect on the certificate of mailing practice under 37 CFR 1.8 for making a timely reply to an Office action.
Notwithstanding the foregoing, if the Office charges a deposit account by an amount other than an amount specifically indicated on the charge authorization, any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and must include a copy of that deposit account statement. This provision of 37 CFR 1.26(b) applies, for example, in the following types of situations: (1) a deposit account charged for an extension of time pursuant to 37 CFR 1.136(a)(3) as a result of there being a prior general authorization in the application; or (2) a deposit account charged for the outstanding balance of a fee as a result of an insufficient fee submitted with an authorization to charge the deposit account for any additional fees that are due. In these situations, the party providing the charge authorization is not in a position to know the exact amount by which the deposit account will be charged until the date of the deposit account statement indicating the amount of the charge. Therefore, the two-year time period set forth in 37 CFR 1.26(b) does not begin until the date of the deposit account statement indicating the amount of the charge.
Effective November 7, 2000, 37 CFR 1.28(a) was amended to provide a three-month period (instead of the former two-month period) for requesting a refund based on later establishment of small entity status. As the Office now treats the receipt date of a deposit account charge authorization as the fee payment date (for refund purposes), any request for a refund under 37 CFR 1.28(a) must be made within three months from the date the charge authorization is received in the Office.
The Office may refund the search fee and any excess claims fee paid in an application filed under 35 U.S.C. 111(a) if applicant files a petition under 37 CFR 1.138(d) to expressly abandon the application before an examination has been made of the application. See MPEP § 711.01.
The basic filing fee, non-electronic filing fee, the examination fee, and the application size fee cannot be refunded unless the fee was paid by mistake or in excess of that required.
To obtain a valid patent, a patent application as filed must contain a full and clear disclosure of the invention in the manner prescribed by 35 U.S.C. 112(a). The requirement for an adequate disclosure ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent. All amendments and claims must find descriptive basis in the original disclosure. No new matter may be introduced into an application after its filing date. Applicant may rely for disclosure upon the specification with original claims and drawings, as filed. See also 37 CFR 1.121(f) and MPEP § 608.04.
If during the course of examination of a patent application, an examiner notes the use of language that could be deemed offensive to any race, religion, sex, ethnic group, or nationality, he or she should object to the use of the language as failing to comply with 37 CFR 1.3 which proscribes the presentation of papers which are lacking in decorum and courtesy. The inclusion of such proscribed language in a federal government publication would not be in the public interest. Also, the inclusion in application drawings of any depictions or caricatures that might reasonably be considered offensive to any group should be similarly objected to.
An application should not be classified for publication under 35 U.S.C. 122(b) and an examiner should not pass the application to issue until such language or drawings have been deleted, or questions relating to the propriety thereof fully resolved.
For design application practice, see MPEP § 1504 et seq.
See MPEP § 714.25 for information pertaining to amendments and other papers presented in violation of 37 CFR 1.3.
The Director may require papers filed in the Patent and Trademark Office to be printed, typewritten, or on an electronic medium.
· (a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.
· (b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.
· (c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.
· (d) A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For notices in drawings, see § 1.84(s). The content of the notice must be limited to only those elements provided for by law. For example, "©1983 John Doe"(17 U.S.C. 401) and "*M* John Doe" (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in paragraph (e) of this section is included at the beginning (preferably as the first paragraph) of the specification.
· (e) The authorization shall read as follows:
A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all (copyright or mask work) rights whatsoever.
·
· (f) The specification must commence on a separate sheet. Each sheet including part of the specification may not include other parts of the application or other information. The claim(s), abstract, and "Sequence Listing" (if required or submitted under § 1.821(c) ) should not be included on a sheet including any other part of the application.
· (g)
· (1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement as defined in § 1.9(e).
· (2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth § 1.17(i) if not filed within one of the following time periods:
· (i) Within three months of the filing date of a national application;
· (ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
· (iii) Before the mailing of a first Office action on the merits; or
· (iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.
· (3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.
The specification is a written description of the invention and of the manner and process of making and using the same. The specification must be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention pertains to make and use the same. See 35 U.S.C. 112 and 37 CFR 1.71. If a newly filed application obviously fails to disclose an invention with the clarity required by 35 U.S.C. 112, revision of the application should be required. See MPEP § 702.01. The written description must not include information that is not related to applicant’s invention, e.g., prospective disclaimers regarding comments made by examiners. If such information is included in the written description, the examiner will object to the specification and require applicant to take appropriate action, e.g., cancel the information. The specification must commence on a separate sheet. Each sheet including part of the specification may not include other parts of the application or other information. The claim(s), abstract and "Sequence Listing" (if required or submitted under 37 CFR 1.821(c) on physical sheets of paper (37 CFR 1.821(c)(3) ) or as a PDF image file via the USPTO patent electronic filing system (37 CFR 1.821(c)(2) ) should not be included on a sheet including any other part of the application (37 CFR 1.71(f) ). That is, the claim(s), abstract and "Sequence Listing" (if required or submitted under 37 CFR 1.821(c) on physical sheets of paper (37 CFR 1.821(c)(3) ) or as a PDF image file via the USPTO patent electronic filing system (37 CFR 1.821(c)(2) ) should each begin on a new page since each of these sections (specification, abstract, claims, "Sequence Listing") of the disclosure are separately indexed in the Image File Wrapper (IFW). There should be no overlap on a single page of more than one section of the disclosure.
The specification does not require a date.
Certain cross references to other related applications may be made. References to foreign applications or to applications identified only by the attorney’s docket number should be required to be canceled. U.S. applications identified only by the attorney’s docket number may be amended to properly identify the earlier application(s). See 37 CFR 1.78.
As the specification is never returned to applicant under any circumstances, the applicant should retain an accurate copy thereof. In amending the specification, the attorney or the applicant must comply with 37 CFR 1.121 (see MPEP § 714).
Examiners should not object to the specification and/or claims in patent applications merely because applicants are using British English spellings (e.g., colour) rather than American English spellings. It is not necessary to replace the British English spellings with the equivalent American English spellings in the U.S. patent applications. Note that 37 CFR 1.52(b)(1)(ii) only requires the application to be in the English language. There is no additional requirement that the English must be American English.
Form paragraph 7.29 may be used where the disclosure contains minor informalities.
The disclosure is objected to because of the following informalities: [1]. Appropriate correction is required.
Use this paragraph to point out minor informalities such as spelling errors, inconsistent terminology (see the requirement of 37 CFR 1.71(a) for "full, clear, concise, and exact terms"), numbering of elements (see 37 CFR 1.74 ), etc., which should be corrected. See form paragraphs 6.28 to 6.31 for specific informalities.
Form paragraphs 6.29-6.31 should be used where appropriate.
The spacing of the lines of the specification is such as to make reading difficult. New application papers with lines 1 1/2 or double spaced (see 37 CFR 1.52(b)(2) ) on good quality paper are required.
35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, requires the specification to be written in "full, clear, concise, and exact terms." The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA). Examples of some unclear, inexact or verbose terms used in the specification are: [1].
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
· (a) Papers that are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application, or a reexamination or supplemental examination proceeding.
· (1) All papers, other than drawings, that are submitted on paper or by facsimile transmission, and are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination or supplemental examination proceeding, must be on sheets of paper that are the same size, not permanently bound together, and:
· (i) Flexible, strong, smooth, non-shiny, durable, and white;
· (ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8 1/2 by 11 inches), with each sheet including a top margin of at least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 inch), and a bottom margin of at least 2.0 cm (3/4 inch);
· (iii) Written on only one side in portrait orientation;
· (iv) Plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalent; and
· (v) Presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition.
· (2) All papers that are submitted on paper or by facsimile transmission and are to become a part of the permanent records of the United States Patent and Trademark Office should have no holes in the sheets as submitted.
· (3) The provisions of this paragraph and paragraph (b) of this section do not apply to the pre-printed information on paper forms provided by the Office, or to the copy of the patent submitted on paper in double column format as the specification in a reissue application or request for reexamination.
· (4) See § 1.58 for chemical and mathematical formulae and tables, and § 1.84 for drawings.
· (5) Papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the Office’s electronic filing system requirements.
· (b) The application (specification, including the claims, drawings, and the inventor’s oath or declaration) or reexamination or supplemental examination proceeding, any amendments to the application or reexamination proceeding, or any corrections to the application, or reexamination or supplemental examination proceeding.
· (1) The application or proceeding and any amendments or corrections to the application (including any translation submitted pursuant to paragraph (d) of this section) or proceeding, except as provided for in § 1.69 and paragraph (d) of this section, must:
· (i) Comply with the requirements of paragraph (a) of this section; and
· (ii) Be in the English language or be accompanied by a translation of the application and a translation of any corrections or amendments into the English language together with a statement that the translation is accurate.
· (2) The specification (including the abstract and claims) for other than reissue applications and reexamination or supplemental examination proceedings, and any amendments for applications (including reissue applications) and reexamination proceedings to the specification, except as provided for in §§ 1.821 through 1.825, must have:
· (i) Lines that are 1 1/2 or double spaced;
· (ii) Text written in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 6); and
· (iii) Only a single column of text.
· (3) The claim or claims must commence on a separate physical sheet or electronic page (§ 1.75(h) ).
· (4) The abstract must commence on a separate physical sheet or electronic page or be submitted as the first page of the patent in a reissue appli
