Parts, Form and Content (MPEP 600)

by patentbar on December 3, 2007 · 4 comments

in MPEP 0600

What actually goes into a Patent App.


Complete Applications –

If application doesn’t meet requirements, applicant can petition to have a filing date assigned. If application meets these minimum requirements, but is incomplete (missing oath or fee), the applicant will be sent a notice to file missing parts (usually has 2 months from filing date). There is no requirement that the inventors be named. PTO requests a “numeric identifier” in cases where inventors are not known.

  • Non-provisional (regular) – specification (at least one claim); drawings where required; oath/declaration; filing fee
  • Provisional – cover sheet; specification (need not include any claims); drawings where required; filing fee

Filing Date Requirements –

  • Non provisional (regular) – specification, drawings
  • Provisional – specification, drawings
  • CPA – separate request for CPA; should file response to last office action

Non-Provisional Application Requirements –

A non-provisional utility patent application must include a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing, search, and examination fees. A complete non-provisional utility patent application should contain the elements listed below, arranged in the order shown.

1) Utility Patent Application Transmittal Form or Transmittal Letter

2) Fee Transmittal Form and Appropriate Fees

  • Basic filing fee includes 3 independent claims and 20 total claim
  • Claims fees are not refundable
  • Non-elected claims in a restriction requirement must be cancelled or paid for
  • Multiple dependent claims count as at least two D claims; extra fee applies
  • Improper MDC count as a single dependent claim
  • Fees Paid by Mistake – may be refunded. Must be requested within 2 years. Small entity requests must be made within 3 months of the payment of fee. PTO will not refund $25 or less w/o request.

3) Application Data Sheet (see 37 CFR § 1.76)

4) Specification (with at least one claim)

  • Title (500 characters max)
  • Abstract (separate sheet – 150 word max)
  • Formulae and tables may be in the specification. Drawings and flow diagrams must be on separate sheets.
  • Real examples should be described as “was” done. Prophetic examples should be described as “is” done.

5) Drawings (when necessary)

  • Application may be filed with informal drawings
  • Formal drawings are normally required within 3 months after mailing of Notice of Allowance (not extendable)
  • Must show every feature specified in the claims

6) Executed Oath or Declaration

7) Nucleotide and/or Amino Acid Sequence Listing (when necessary)

Incorporation by Reference

Mere mention of another document without language of incorporation is not sufficient to incorporate the doc by reference.

  • Essential material – may be incorporated by reference to a US patent, US application publication, pending US application or abandoned application less than 20 years old.
  • Nonessential material – may be incorporated by reference to a non-US patent or to a published document (no hyperlinks).

Correspondence Address

  • PTO requires one correspondence address.
  • To make a change: 1) Before a declaration of any inventors has been filed, the correspondence address may be changed by a registered attorney named in transmittal letter, or ANY of the inventors. If assignee or party who will be assignee filed the application, they may change the correspondence address; 2) After a declaration, the ‘ca’ may be changed only by a registered attorney of record, an assignee, or ALL of inventors (unless there’s an assignment of entire interest and that assignee has been made of record); or 3) If the attorney changes his address, he must file a separate paper in each application, unless the ‘ca’ is to a customer number.

English Translation –

A non-provisional utility patent application must be in the English language or be accompanied by a translation in the English language, a statement that the translation is accurate and a fee set forth in 37 CFR §1.17(i).

Format –

All papers which are to become part of the permanent records of the USPTO must be typewritten or produced by a mechanical (or computer) printer. The text must be in permanent black ink or its equivalent; on a single side of the paper; in portrait orientation; on white paper that is all of the same size, flexible, strong, smooth, nonshiny, durable, and without holes. The paper size must be either: 21.6 cm. by 27.9 cm. (81/2 by 11 inches), or 21.0 cm. by 29.7 cm. (DIN size A4). There must be a left margin of at least 2.5 cm. (1 inch) and top, right, and bottom margins of at least 2.0 cm. (3/4 inch). Drawing page requirements are discussed separately below.

Basic Recommended Layout of a Patent Application:

(601; 35 U.s.C. 111; 37 CFR 1.51 Usually Non-provisional)

  • Title of the Invention (See 606)
  • Cross-ref to related apps (See 201.11)
  • Statement regarding federally sponsored research or development (see 310)
  • Names of parties to a joint research agreement (37 CFR 1.71(g))
  • Reference to a Sequence Listing, a table, or a computer listing appendic submitted on CD and an incorporation by reference of material on the CD. For apps prior to March 1, 2001, see microfiche instead of CD.
  • Background of the invention (608.01(c))
    • Field of the invention
    • Description of related art including information disclosed under 37 CFR 1.97-98
  • Brief summary of Invention (608.01(d)
  • Brief description of the several views of the drawing (608.01(f))
  • Detailed description of invention (608.01(g))
  • CLAIMS (starting on a separate sheet) (608.01(i)-(p))
  • Abstract of the disclosure (starting on a separate sheet) (608.01(b))
  • Sequence Listing if on paper (37 CFR 1.821-825).

Preliminay Amendments:

Sometimes the applicant wants to change the specifications in the app itself. This can be done by (1) actually rewriting the specs, or (2) by filing a preliminary amendment with new material and changes. The preliminary amendment is allowed to be part of the app from the day of filing. If it has new subject matter not in the rest of the app, it will have to have supplemental oaths for the new subject matter.

Converting a non-provisional app to a Provisional app:

The main reason to do this is when the USPTO says the non-provisional app does not make a claim, so the applicant may convert the app to a provisional app (that does not need a claim). The provisional app will still have the original filing date, and then a new non-provisional app that claims the benefit of the provisional app will still be able to go through with proper claims.

Non-Provisional (regular) to Provisional –

  • Must be within 12 months from application filing date
  • Prior to abandonment or payment of issue fee
  • Prior to request for statutory invention registration
  • No refund of fees.
  • To convert, you need: a request for conversion and fee

Provisional Apps: (37 CFR 1.53(c))
Requires no claims. Requires a cover sheet and the appropriate basic filing fee. If cover sheet & filing fee are not submitted with the app, there is a 2 month (nonstatutory & extendable) time period to submit them along with a surcharge.

Converting from provisional to non-provisional:

IN GENERAL DO NOT DO THIS! It is better instead to file a new non-provisional app and then just claim the benefit of the provisional app. This allows for: 1. The time span of the patent to start from the filing date of the later non-provisional app (extending the life of the patent); 2. It also allows the earlier provisional filing date to be used in avoiding prior art.
But, if you do want to convert: Filing a request for conversion, a processing fee, basic filing fees for a non-provisional app, and if needed the oath for a non-provisional app. The request must come before the earliest of: 1. abandonment of the provisional app; 2. expiration of 12 months, whichever is earlier.

Provisional to Non-Provisional (regular) (as opposed to claiming priority) –

  • Must be filed within 1 year for filing date and prior to abandonment
  • Fee
  • Application filing fee (may be filed after conversion date)
  • Amendment including at least one claim (unless already a claim)
  • Oath or declaration (may be filed after conversion date)

Omissions and Corrections:

The app may have missing pages but still have enough information to create a filing date. If so, the OIPE will notify the applicant of the filing date, but that there are pages missing. All pages must be numbered to make it easier to determine if pages are missing.

Options for omitted material:

  • 1. If the pages were sent but lost, the applicant can establish that the USPTO actually received the material.
    • Requires a petition, along with fees and evidence (like the post-card receipts used to show what was sent to the USPTO) showing that the USPTO got the material.
    • If this is successful, all the material will be under the original filing date.
  • 2. If the pages were not sent originally, then the applicant may simply submit the missing pages, and then the new application filing date will be the date for the new material was submitted instead.
    • Later filing date, but if the material was not sent originally it cannot be avoided.
    • If there are claims that are not supported by written material in the specification, then they are not patentable (35 U.S.C. 112)
    • If the app was filed without filing fees, then this option can be more cost effective since it is effectively a brand new app. The original can be abandoned, and fees only need to be paid on the new app.
  • Back to claiming benefits & omission: Apps filed after Sep. 21, 2004 containing a claim for priority under 37 CFR 1.55 for a foreign app, or even 37 CFR 1.78 for benefit of a prior-filed provisional, nonprovisional, or international app that was already filed on the date of the original filing:
    • Back to 37 CFR 1.37(a): When the material that should have been in the later app claiming priority/benefit of one of those earlier apps was inadvertantly omitted (and if the material is completely contained in the prior apps), the applicant may amend the missing material to the new app.
  • There is another possibility for missing material: The applicant may simply decide not to submit the new material since it is not necessary for supporting the claims. However, the applicant still has to file a preliminary amendment to renumber the pages to correct the appearance of missing material. This should be done before the first Office Action on the app. This avoids the late filing date of #2 above since no new material is submitted.

When Claims & Drawings are Missing, Application Data Sheets, and Supplemental Oaths (601-603)

Non-Provisional apps & Claims: Each NPA (Non-provisional App, new abbrev.) must state at least one claim by statutory requirements (35 U.S.C. 111(a)), no claim, no filing date. The USPTO will send a “notice of incomplete application” to the applicant indicating that there is no filing date because there is no claim. The final filing date will be the date that the USPTO gets a claim on the app, and there is need for a supplemental oath/declaration for the claim.

Preliminary amendments: If there is a preliminary amendment that wipes out all the claims and adds no new claims on an app, the USPTO will not act on the amendment and will still award a filing date.

Converting to a Provisional App: For NPAs after 19950608 there is an alternative to file a petitition under 37 CFR 1.53(c)(2) to turn the NPA into a PA (PAs do not need claims). If successful this will give the new PA the benefit of the earlier filing date. However, it must come before either the app is abandoned, or 12 months from the original filing (remember a PA only lasts for 12 months).

601.01(f) Apps without Drawings: (35 U.S.C. 113)
If there is an app without necessary drawings, then the USPTO will not give a filing date. The specification is examined to see if a drawing is necessary (usually it is, but for some patents there is no need for a drawing). USPTO practice: If an app has at least one process or method claim, then the USPTO will assume that there is no requirement for a drawing in order to receive a filing date (note however that this does not mean a drawing might not be necessary in some circumstances, also some claims the require drawings might get rejected, this is just a minimum standard).
There are some types of patent for which drawings are not generally needed:

  • Coated articles or products: If the invention is simply a coating material (like paint) to be used on other products.
  • Articles made out of a particular material or composition: When the material used in making articles is the subject of the app, no need to have drawings unless significant details of the structure or arangement are involved in those articles.
  • Laminated structures (similar to coated articles)
  • Articles, apparatus, or systems where the sole distinguishing feature is presence of a particular material:
    • e.g. a hydraulic system where the only invention claimed is a new type of hydrolic fluid
    • sutures where the sutures themselves are not novel, but the material they are made out of is.

For missing drawings, the USPTO sends a “notice of incomplete application” to the applicant.
What can the applicant do at this point?

  • 1. File a petition under 37 CFR 1.53(e) (paying fee in 37 CFR 1.17(f) making these assertions:
    • The drawing actually was submitted (lost drawings) There must be sufficient evidence that the drawing was submitted, like a date-stamped postcard receipt (503)
  • 2. OR: Petition that drawing is not necessary under 35 U.S.C. 113 for the filing date (stating that there is a claim that does not need a drawing and that the USPTO was wrong in not granting a filing date.
  • 4. OR: Submit the missing drawings to the USPTO, accepting the later filing date of when the USPTO receives the drawings.
  • 5. The 27 CFR 1.57(a) route: After 20040921: If the drawings were inadvertantly missing from the app, and were also completely contained within a previous app that the current app is claiming the benefit of, then the applicant can file a petition (with 37 CFR 1.17(f) fee) and have the drawings amended to the new app. This will allow for the original filing date.

601.01(g) What happens when there is enough for a filing date, but drawings are still missing?
This is when a drawing is missing, or the written specification describes or references a drawing that does not exist in the app. The USPTO will send a “Notice of Omitted Items” which means there is a filing date, but the applicant has 2 months to get the drawing submitted (a nonstatutory and extendable deadline). At this point, the procedure is the same as for missing pages out of a specification:

  • 1. Within the 2 month time frame, applicant may file petition under 37 CFR 1.53(e) (with fee) that the applicant actually did submit the drawing. There must be proof of this (like postcard receipts) to show it was deposited (37 CFR 1.181(f)).
  • 2. Applicant may file the missing drawings and accept a later filing date (filing has to be within the 2 month deadline). There needs to be a separate oath referring to the new drawings as well (37 CFR 1.63/1.64).
  • 3. Use the old 37 CFR 1.57(a) route for apps after 20040921 (see above).
  • 4. Finally: Do nothing, the applicant does not have to try to get the missing drawings included (good if the applicant does not need them and wants to keep the original filing date). However, the applicant should still amend the app under 37 CFR 1.121(d) to remove references to the missing drawings and renumber pages/drawings. This should be submitted as a preliminary amendment before the first official Office action.

601.03 Changing Correspondence Address: (see 37 CFR 1.33(a) in Charts)

  • The applicant should (preferably) put correspondence address on the ADS (Application Data Sheet)
  • Alternatively, the address can be in the app itself as long as it is clearly identified.
  • IF there is a discrepancy in addresses this is the order the USPTO uses to find an address:
    • 1. Address on the ADS
    • 2. address in application transmittal
    • 3. oath or declaration (unless power of atty doc is more current)
    • 4. power of atty.
  • 37 CFR 1.33(a) also requires the daytime phone of the party with whom correspondence is directed.
  • Before the oath/declaration is made: Only the party who filed the app can change the correspondance address
  • AFTER the oath/declaration:
    • registered atty or agent of record
    • an assignee (provided under 37 CFR 3.73(b))
    • all of the applicants under 37 CFR 1.41(b), unless the entire interest has been assigned to an assignee who has taken action under 37 CFR 3.71.

601.05 Application Data Sheets: (37 CFR 1.76 covers ADS, see Charts)

  • The ADS contains most of the important metadata about an app (who the inventors are, correspondence addrs, phone numbers, customer numbers, etc.) It organizes all this info in one place.
  • The ADS can be updated with a supplemental ADS in case there is a need for a correction. The supplemental ADS only has to have corrections made to the original. Note: the supplemental ADS cannot fix the following:
    • inventorship changes (those need to be in re-filed oaths/declarations)
    • correspondence changes
    • citizenship changes.
  • The ADS is not required but is strongly recommended
  • Order of Precedence: When there is conflicting info between oath/declaration & the ADS who wins:
    • If everthing is submitted at the same time: ADS governs
    • Otherwise: the latest submitted information will govern.
    • Remember though: The official names and citizenships of inventors go into the oaths, and they must be corrected via supplemental oaths/declarations. Even though oaths/declarations are the official records, the USPTO will use info on the ADS, so the applicant should file a supplemental ADS as well.
  • The 7 Headers of an ADS:
    • 1. applicant information (the oath/declaration still needs names & nationalities of inventors even if listed here)
    • 2. correspondence info
    • 3. app information (like app number if one has been issued, date information, etc.)
    • 4. representative info (like names, patent office #’s of lawyers or agents)
    • 5. Domestic priority info (claiming benefit/priority of previous US patents)
    • 6. Foreign priority info (same thing but for foreign patents)
    • 7. assignee information.

More on Application Data Sheets

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 except that the citizenship of each inventor must be provided in the oath or declaration under 37 CFR 1.63 even if this information is provided in the application data sheet **. 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 and the citizenship of the inventors. (See 37 CFR 1.76(d) and MPEP § 601.05.)

CFR 1.76 encourages applicants to submit an application data sheet containing bibliographic information: applicant info, correspondence info, application info, representative info, domestic priority info, foreign priority info, and assignee info. A supplemental data sheet may be submitted to correct info previously supplied. Only to be used to correct new info, not inventorship, citizenship, or correspondence address.

Inconsistencies between Oath/Declaration and Application Data Sheet –

  • The oath/declaration always governs names and citizenship
  • The application data sheet governs when submitted simultaneously with the oath/declaration
  • The latest filed document is controlling

Test takers report the following subject matter on the exam. Know that in case of conflicting information between Application Data Sheet and Oath/Declaration the Application Data Sheet wins, except for naming and citizenship of the inventors, in which case the Oath/Declaration wins. This is true if ADS and oath filed at same time — otherwise the later filed document controls whether ADS or oath, except for naming and citizenship of inventors — in which case oath controls MPEP 601.05(d).

602 The Original Oath/Declaration: [37 CFR 1.63, 1.68 (see Charts)]

General Requirements of Oath/Declaration –

  • Declaration must be in permanent ink
  • Must identify each inventor (first and last names), as well as their countries of citizenship
  • Statement that inventors signing ‘believe to be first…’
  • Identify application
  • State that oath giver understands contents and duty to disclose
  • Unless the following is provided in application data sheet, oath must provide: 1) inventors’ mailing addresses and residence if different, and 2) application number, country, day, month, year of any foreign application to which priority is claimed.
  • If the declaration is filed with the application, it must include one of: 1) name of inventor(s), and reference to an attached spec which is both attached to the oath or declaration at time of execution and submitted with o/d on filing; 2) name of inventor(s); and attorney docket number which was on spec as filed; or name of inventor(s); and title of invention which was on the spec as filed.
  • If the declaration if filed after the specification, it must include one of: 1) application number; serial number and filing date; 2) attorney docket number which was on the specification as filed; 3) title of invention and reference to an attached specification which is both attached to oath/declaration at time of execution and submitted with oath/declaration; or 4) title of invention and with a cover letter id-ing the app for which it was intended by either application number or serial and filing date.
  • If applicant(s) cannot read English, oath/declaration must be in their language and translated or be on a PTO form.
  • It is improper for an applicant to sign oath/declaration which is not attached to or does not identify a specification and/or claims.
  • An attorney may not sign on behalf of inventor.
  • No amendments to specification after declaration is executed.
  • If person is not the inventor, the oath/declaration must state their relationship.
  • If inventor changes name, a 1.182 petition must be filed to change name.
  • The oath/declaration: Set forth affirmations by the parties that are legally binding (if you lie there are stiff penalties including perjury charges).
  • Oaths vs. Declarations: They are both equally valid, the USPTO prefers declarations since oaths have seals on them that do not scan well for the e-filing and Image File Wrappers (IFWs) the USPTO uses.
  • An oath/decl must make reference to any foreign patent app for which priority is claimed, and any foreign app prior to the filing date of the current app unless the claim of priority is in the ADS.
  • Preliminary Amendments: After 20040921 if the preliminary amendment is submitted with the rest of the app it is considered part of the initial disclosure. If there is new subject matter material in the preliminary amendment that is not in the rest of the app, there must be a supplemental oath/decl just for the preliminary amendment. (If there is not anything new, the original oath/decl is fine on its own).
  • An oath cannot be amended, see supplemental oaths for when there is need for a change.
  • COPIES are recommended: The applicant should keep the original oath/decl and give a certified copy to the USPTO (good in case USPTO loses files).

Copies of Oath/Declaration –

  • May be filed in lieu of original signatures (including fax).
  • A new oath/declaration need not be submitted in a continuation or division if: 1) prior application contained proper oath/declaration; 2) filed by one or more of the previous filed inventors; 3) no new matter is added (not a CIP); and 4) copy of oath/declaration filed previously is submitted.
  • If co-inventors are deleted in continuation or divisional, a copy of the previous declaration may be filed, but a statement requesting deletion of the omitted inventors must accompany the submission.

603 Supplemental Oaths/Declarations: (37 CFR 1.67 see Charts)

  • Generally required when defect in oath/declaration as filed. Only the inventors as to whom the oath/declaration is defective must submit a supplemental document. Capturing bibliographic information derived from an application data sheet containing errors may be recaptured by a request therefore and the submission of a supplemental application data sheet, an oath or declaration, or a letter pursuant 37 CFR 1.33(b).
  • One may file an application data sheet to correct errors in some new matters (mailing address, foreign priority claim), instead of new declaration. Supplemental application data sheets may be supplied prior to payment of the issue fee to either correct or update information in a previously submitted application data sheet or an oath or declaration.
  • The Office will initially capture bibliographic information from the application data sheet notwithstanding whether an oath or declaration governs the information; they will not generally look to an oath or declaration to see of the information is consistent with the application data sheet.
  • Supplemental oaths are to correct errors in original oaths they must:
    • 1. identify the entire inventive entity &&
    • 2. be signed by all inventors if the correction relates to a topic that affects all of them (like a change in the claims that all inventors were involved with) OR by only those inventors to whom a correction relates (like changing the citizenship of one inventor).
  • As seen earlier (in MPEP 409; § 8) the legal representative for a deceased/unavailable inventor may also sign onto an oath or supplemental oath.

Oaths, Fees, and the start of the notorious 608 (605-608)

605.01-04 Names & Info on Patent Apps: (37 CFR 1.41, 1.45 in Charts)

  • The inventorship for an app is based on the filings in the oath/decl.
  • The oath must have: Name, residence, & citizenship of each inventor, and if the app is submitted without the oath (oath/decl may be filed later) then it should still state this inforrmation.
    • Important: The declaration of names does not apply to international apps that are entering the national stage. Instead, 37 CFR 1.497(d) has a petition process to change those names.
  • In a NPA, each applicant must state his citizenship
  • In an NPA, each applicant must state his place of residence (city & state or foreign country), unless the residence is already stated in an ADS.
  • In order to execute the oath/decl (to make it official) the applicant must sign the doc. This signature does not have to be in English, and there is no particular form for the signature.
    • For EFS apps, there is still a need for a signature too.
    • Remember from earlier review that changes to the app (without going through a formal amendment process or continuation app) must be done before the oath/decl is execture. 37 CFR 1.52(c) Changes to the app before the oath is signed should be signed & dated to show they were before the oath was executed. Basically: the app should be what the applicant sets forth, and changes made after the oath is executed (even if done by counsel of record) are not allowed.
    • REMEMBER: The atty of record CANNOT sign for an inventor due to having a lack of a “proprietary interest” in the invention. This is different than when an inventor cannot be reached, or is deceased and has the executor of his estate sign, or if an assignee signs.
  • The full name of each inventor is also printed. Full name means: Last name & at least one given name in full.
    • OK: John Paul Doe, John P. Doe
    • Not OK: JP Doe, John Paul, Mr. Doe
    • Changes to names: A simple type (like a misspelling) may be fixed via notice (USPTO recommmends using an ADS to show the correct spelling). However, any actual changes to a name require a petition under 37 CFR 1.182 + a fee.

605.07 Joint Inventors: (35 U.S.C. 116; 37 CFR 1.45(b)-(c) in Charts)

  1. In modern inventions, people work in teams and big inventions could involve inventors who do not work together or even at the same time. The rules are designed to make it easier for multiple inventors to act jointly.
  2. There needs to be a “quantum of collaboration or connection” between the inventors, but they do not all have to:
    1. have physically worked together on the invention.
    2. Put in the same amount of time or contribution to the invention.
    3. each inventor did not have to make contributions to the subject matter of every claim in the patent (although obviously each one had to contribute to at least 1 claim)

606 The Title: Brief but descriptive, up t0 500 characters, if the examiner does not like the title he may ask the applicant to change it.

607 $$$: Filing Fee (see 37 CFR 1.16 fees):

  • Basic Fees: (NPAs)
    • Filing fee, search fee, examination fee
    • As of 20041208, an NPA requires: Filing fee, search fee, examination fee. It might require: Application size fee (if > 100 pages in the app, fee increments for each additional 50 pages > 100), excess claims fee.
    • The filing/search/examination fees are all due at the time of filing. However, the fees may be paid later (within time limit in 37 CFR 1.53(f)) but the applicant has to pay a surcharge under 37 CFR 1.16(f).
  • Provisional Apps:
    • For a PA, only the basic filing fee is required, with the same ability to pay later with a surcharge as with an NPA. (since there is no search or examination for a PA, those fees are only applicable if the PA is actually converted to an NPA (which is not generally recommended)).
  • App. Size Fee: (37 CFR 1.16(s))
    • If the app is > 100 pages, then for each 50 pages extra (rounding up so 151 pages counts as 2 50-page increments > 100) there is a fee
    • The size of the app does not include sequence listings or listings of source-code for a software patent (as long as they are in ASCII format).
    • For electronic files that come in a format different than the official office electronic format, the size of 1 page is considered to be 3 KB of text.
    • For electronic files that do use the official Office electronic filing system, the rule is that the final size will be 75% of the number of sheets that were entered into the Office File Wrapper system originally. (this seems to be to encourage putting stuff in electronically).
  • Excess Claims fees (37 CFR 1.16(h) for independent claims, 37 CFR 1.16(i) for dependent claims):
    • For independent claims, anything > 3 needs a fee for each claim
    • For dependent claims, anything > 20 needs a fee for each claim.
      • For multiple dependent claims: If the claim is actually valid, the multiple dependent claim gets calculated based on how many previous claims it depends on (if it depends on 3 prior claims, it is charged for 3). If the claim is improper (bad claim) then it only gets charged as 1 dependent claim.
      • There is also a separate fee for any app that even contains a multiple dependent claim at all.
  • When you can get a refund on Fees: (37 CFR 1.26 in Charts):
    • If the fee is paid by mistake
    • If the payment is in excess of the amount required
    • Refunds come via direct deposits to applicant’s bank account
    • Refund requests have to be requested within 2 years (non-extendable) of the original payment (37 CFR 1.26(b))
    • For USPTO Deposit accounts, after 20001107: Instead of using the date of payment as when the applicant authorized the USPTO to charge the account, instead the date of payment is when the USPTO actually charged the account (received payment). This means the date of payments is now the (later) date when the USPTO actually gets the $$ and the 2 year refund request period starts at the later date.

608 (only the beginning) Disclosures to the USPTO:

So ya want a patent eh? To get one, the applicant must make a complete disclosure of the invention such that the information given in the patent app is enough to let a person reasonably skilled in the art of the area the app covers to actually use the invention made in the app. (Quid Pro Quo: Applicant spills the beans on how the invention works in detail, in exchange for protection on the invention). Remember: The original specification has to have all the subject matter for the patent, and any amendments cannot have new subject matter (use a CIP if you want the app to get new subject matter, but the new stuff will only get the filing date of the CIP).

The Specification: (37 CFR 1.52, 1.58, 1.71)

  • It is a written description of the inventions, and of how to make & use the invention.
  • Has to commence on a separate sheet (each sheet with the specification on it can’t have other parts of the app, they need to be kept separate, so abstract, description, claims, etc. should all start on their own separate pages)
  • The spec. needs to be in English (or be a valid translation) but British spellings are expressly considered OK.
    • Foreign Language: Apps in foreign languages will be given filing dates.
    • Requirements:
      • A translation into English of all foreign language material (for an NPA or a PA that another app will claim the benefit of).
      • Statement that the translation is accurate
      • Extra fee under 37 CFR 1.17(i)
      • Should be filed with the NPA or within a time set by the USPTO
      • For a PA, the translation is neccessary when a later NPA will be claiming the benefit of the PA.
      • Failure to get a translation when given notice will mean an abandonment of an NPA.
  • Pretty Pictures (where to put diagrams):
    • Diagrams/drawings/flow-charts do NOT go into the written description, they go into the separate section for drawings & diagrams.
    • Tables & equations ARE allowed in the description part of the app, but the same table should not be repeated in the drawings section.
  • Hyperlinks & Executable code (like javascript in an electronic filing) are BAD, USPTO will not accept them in an app.

Abstracts, Claims, Incorp. by Ref to “Essential Material” (608.01(a)-(p))

Abstract: A brief (50-150 word, 15 line) ¶ that is a concise statement of what the technical disclosure actually is, especially what the novel part of the invention is. The applicant is responsible for writing the abstract, the examiner is responsible for reviewing/editing it.

Background: Gives general info about the technical area that the invention is in. 2 parts:

  • Field of invention
  • Description of Related Art, including problems solved by the new invention.

Brief Summary:
This is to notify the public of the invention’s nature. By putting the descriptions in a short synopsis, it is supposed to be easier to search for the patent in the future.

Brief Desc. of Drawings:
Just like a table of figures, it allows the USPTO to 1. quickly find out if all drawings are actually present; 2. determine if drawings have correct descriptions.

Detailed Description of the Invention:
The main part of the app, this is where the app describes: how to make & use the invention, “best known method” of carrying out the invention, and finally a statement of utility (needed since inventions have to be “useful” to get a patent, although lots of crap still gets through).

Claims (fun fun):
Each claim is a super-condensed 1 sentence description of an invention (holy crap are they horrible looking sentences). When it comes to what the invention actually represents, look at the claims: You can only sue for infringement if somebody else is doing something that infringes on at least 1 claim. Even if someone else is using techniques/materials/etc from the description, if it is NOT infringing a claim, there is nothing to sue over.

  • Claims must begin on a separate sheet (just like all the major sections of the app)
  • Each claim must be an object of a sentence (e.g. “We claim …”, or “The invention does …”)
  • Each claim is 1 freakin’ sentence: Starts with a Cap, ends in a ‘.’ You cannot use a ‘.’ inside a claim unless it is for an abbreviation.
  • For multiple elements in 1 claim, use indentations to separate the elements (and multiple indentations to nest sub-elements)
  • a claim can reference the description or drawing using (parentheses enclosed letters) to make it clear what is being referenced.
  • Start claims broadest to narrowest, the claims with the least restrictions should come first.
  • As much as practical, put dependent claims near the independent claim they depend on (think of them as pointers, try to keep each claim as close to its parent as possible).
  • If there are multiple species of an invention (this means the invention takes multiple forms or embodiments) then group claims by each different form if possible.
  • Any wacky jargon terms (techno terms) that end up in the claims have to be clearly defined in the description. The terms used in the claims can have unusual meanings, as long as the meanings are not ‘repugnant’ to meanings in normal usage (so don’t go making terms mean the opposite of what they normally mean).
    • When it comes to terms, variety is not the spice of life. Once a thing is defined, the claims have to use the same term for the same thing throughout the app.
  • 2 Major Types of Claims: Indepedendent & Dependent.
    • Independent claims stand on their own, apps usually will have 3-4 independent claims.
    • Singly Dependent claims rely on 1 parent: independent claim; OR another depdent claim (think of it as a linked-list where the head node is always anchored on an independent claim.)
      • Remember: A dependent claim must have all the limitations of the claims that it itself depends on. The scope of the claim may be different, but the limitations must be at least those of the parent claim! (An0ther way to think about this: For a dep. claim, there should be no possible way to infringe upon the dep. claim that would not also infringe upon the parent claim too; Dep. claims are <= the basic claims)
    • Multiply Dependent Claims: These are not used as frequently:
      • IN THE ALTERNATIVE (OR logic) the dependent claim relies on 1 of multiple parent claims. ONLY ‘OR’ LOGIC IS ALLOWED (claim 3 CANNOT depend on claim 1 && 2, just claim 1 || 2)
      • Once a claim is multiply dependent, it can only have singly dependent claims further chained off of it, there can never be a multiply-dependent claim depending on ANOTHER multiply dependent claim:


    • Excess Fees on claims: For independent claims: > 3 each one has an extra fee; For dependent claims > 20 each additional claim has a fee
    • Singularly Dependent claims can be chained together.

More on Fees for Multiple Dependent Claims (600-86):
When there are multiple dependent claims that are proper, the claims are charged based on how many claims they depend on. If a multiple dependent claim is improper, the examiner will circle it and object to the claim:

Claim #

Claim Type or Dependency


# of Dep.





Dependent on claim 1



Dependent on claim 2



Dependent on claim 2 OR 3



Dependent on claim 4

2 (since 4 is multiply dep. on 2 or 3)


Dependent on claim 4 or 5

1 (IMPROPER: cannot have nested multiply depenedent)




Dependent on claim 1 OR 7



Dependent on claim 1 and 7

1 (IMPROPER: dependency must be in the ALTERNATIVE)

In the end, add up all the numbers in each column to get a total for how many independent or dependent claims there are.
Handling Improper Dependent Claims: (600-87)

  • If there is a claim that is stated as being dependent, but is not actually dependent (like not including every limitation that the parent claims have) then it will have to be cancelled and any further dependencies from the cancelled claim get canceled too.
  • For other improper claims (like multiple dependent claims that are not in the alternative) the examiner will object to the claim and require that the claim is either canceled, or is re-written so that it is proper.
  • If a basic claim is canceled then all dependencies on that claim are cancelled to; but if a claim is rejected then the dependent claims are not immediately canceled, but are merely objected to.

Completeness, Incorporation by Reference, and What “Essential Material” Means: (608.01(p) 37 CFR 1.57)

  • To be valid, a patent app must be complete in that it contains all the information needed to enable any person skilled in the art or science to which the invention pertains to make and use the invention as of its filing date. (You have to give enough info to make the invention usable!)
  • When it comes to information that is essential to the patent app, the information either has to be in the app itself, or it may sometimes be incorporated by reference from another app. For essential material this incorporatin by reference may only be from:
    • a US patent
    • a published US patent app (review: remember how confidentiality does not apply to patent apps where another app claims benefit or incorporates by reference?)
  • For Essential Material, the app cannot incorporate by reference:
    • Foreign patents or patent apps
    • unpublished US patent apps
    • Third party publications (like academic journals)
  • What is Essential Material?
    • Under 35 CFR .157(c) it is material necessary to:
      • 1. provide written description of the claimed invention, how to make and use the invention, and the best known mode of making/using the invention.
      • 2. Claims: any parts that distinctly point out the particular parts of the invention that are claimed.
      • 3. Info that describes the structure, material, acts that correspond to a claimed means or step for performing the function.
  • What is Non-Essential Material?
    • It is material that is intended to provide background info on the field of the invention or to describe the current state of the art.
    • It may include foreign patents/apps, concurrently filed US patent apps that might not be published, or outside publications.
  • Improper Incorporation: (37 CFR 1.57(f))
    • If a reference is improper it may be corrected by amendment, but remember: An amendment cannot contain new subject matter.
  • Incorporation by ref of earlier fililngs:
    • Non-Recursive: If all an applicant wants to do is establish an earlier filing date, then the incorporations by reference may be made to patent apps that in and of themselves would not be 100% valid (say an earlier app has invalid incorporations by reference in it, the USPTO will not recurse into the earlier application to determine if its material is also properly incorporated).
    • Newer applications may incorporate older apps by reference and the material from the older apps will not be considered ‘new’.
  • Forgetting to incorporate inadvertantly: (1.57(a) again)
    • Remember that after 20040921 an app that inadvertently omits material and does not incorporate it by reference, but the material is completely contained in a prior filed app, then the applicant can petition to amend the missing material.

Substitute Specifications & More on Drawings (608.01(q)-608.02(a))

Substituting a new Specification: (608.01(q); 37 CFR 1.125 in Charts):
The sub. spec. is a new spec that may be required when the examiner cannot read or understand the original spec. In some other cases the applicant may voluntarily put in a substitute spec. Remember: NO NEW MATERIAL may be put into a substitute spec!

  • 37 CFR 1.125(a): When the Office requires a new spec. because papers are illegible/hard to understand. Office may require the whole spec be redone, or just parts of it.
  • 37 CFR 1.125(b): When an applicant voluntarily submits a sub. spec. The sub. spec. (but NO voluntary substitution of claims is allowed) may be submitted at any time until the payment of issue fee, provided it comes with a statement that it has no new subject matter (this is why claims are not allowed to be updated in this way!).
  • 37 CFR 1.125(c): A new sub. spec has to be on a clean form without markings, but it should also be accompanied by a form that is marked up to show the differences between original and substitute spec.
    • New text is underlined
    • Deleted text is in Except for short blocks of ≤ 5 characters that may be in [brack]ets.

608.01(r): Derogatory Remarks: OK kids, no smack-talkin’ on other inventions of other people!

608.01(s): Restoring Canceled Matter: Canceled text can only be reinstated via an amendment presenting the deleted text as a new insertion.

608.01(t): NO RESERVATIONS ALLOWED: An application is not allowed to talk about subject matter it does not actually claim in a way to ‘reserve’ it for a future application. Either claim it now, or don’t claim it and don’t try to ‘reserve’ it for the future.

608.01(v) Trademarks:
A trademark here is the proprietary name used by a merchant to distinguish products. (like COKE, INTEL, LINUX). As long as the app either expressly defines the trademark, or the trademark is very well-known in the U.S., it is OK to use trademarks in the app as long as they are identified in ALL CAPS. Like other technical terms, the trademark must have a fixed and definite meaning, once it is defined the app can only use it in one clear way.

DRAWINGS: (608.02)

Review: There are 2 reasons why a drawing may be required:

  1. 1. Statutory: If a drawing is necessary to understand the invention it must be present. (35 USC 113; 37 CFR 1.81)
    1. If needed and missing, no filing date is given, see previous lessons on appealing or amending the drawing.
  2. 2. If the drawing is not necessary, but the subject matter of the application admits a drawing that is not actually present.
    1. If not needed but missing, the error should be corrected but it is treated as a formal error. Applicant gets a non-statutory 2 month period to file the missing drawing.

No New material allowed if drawing is submitted after the filing date: If new material is found in a drawing that is submitted after the original filing date it will not be allowed.
New drawings: An examiner may require a new drawing (without any new subject matter in it) under 37 CFR 1.1/1.83).

How should drawings be made? (37 CFR 1.84):

  • Drawings on paper are OK, if there is a correction it should be on a sheet labeled “Replacement Sheet” (Black & White in India Ink preferred, see below for when color is allowed).
  • Good quality copies are acceptable if lines are uniformly thick, black, and solid.
  • Copies are acceptable if included with the app papers, mailed/hand delivered to the USPTO, or if submitted at time of paying issue fee.

B&W Photos:

  • Accepted in lieu of India ink drawings when the photograph can represent things that a drawing cannot.
  • Must comply with 37 1.84(b) No requirement for special petition/fee and only 1 copy is required.

In 18 Great Smelling Colors!

  • Utility apps allow for limited use of color drawings (37 CFR 1.84(a)(2), (b)(2)) The applicant must petition to allow for color photos & drawings or they will not be accepted in utility or design apps.
  • Along with the petition & filing fee for color drawings/photographs, the applicant must also submit 3 copies of the photos/drawings;
  • There must also be an amendment to insert the following language into the part of the app describing the drawings:
    • The patent or app contains at least one drawing executed in color. Copies of this patent app publication with color drawing(s) will be provided by the U.S. Patent and Trademark Office upon request and payment of the necessary fees.
  • The petition is usually only granted when the USPTO determines that there is no other practical medium to disclose the material except via color drawings/phototgraphs.

The END of 608: Informatl Drawings, & CDs (608.02(b)-608.05(b))

Informal Drawings: (608.02(b) 37 CFR 1.85)
The Office used to delineate between informal & formal drawings, where informal drawings might be used for examination, but were not considered ‘final’. The new rule is that the OIPE will accept drawings that are readable & reproducible for publication (18 month publication) (507).
If the drawing is not acceptable for publication, the applicant has to file acceptable drawings within the later of: 1 month after filing the app, or 14 months after the earliest filing date that this app is relying upon.
Even if the informal drawings are sufficient for publication, there may still be a requirement for formal drawings in an Office action. The formal drawing must be filed in response to the office action, and there is a 3 month, non-extendable time period to file the formal drawings.

What goes into Drawings (608.02(d) 37 CFR 1.83 in Charts):
Any structural detail that is important enough to be described in the written description should also be shown in the drawings.

Getting Drawings from Old Apps into the New App. 608.02(i); 37 CFR 1.182:
If an applicant wants to transfer drawings into the new app from an old app, he must file a petition under 37 CFR 1.182 that has to set forth a hardship situation for why the drawings should transfer.

Correcting Drawings: (608.02(p); 37 CFR 1.121(d) in Charts):

  • Changes to drawings are done via an amendment, the actual changes that are made to the drawings must be described in the drawing amendments section, or in the remarks of the amendment.
  • Drawings must be corrected using replacement sheets that have the clear label of “Replacement Sheet” or “New Sheet” at the top of each page of corrected drawing.
  • The corrected drawings should of course comply with 37 CFR 1.84 requirements for drawings
  • The replacement has to have everything that was in the prior sheet, even if only one drawing is actually being amended.
  • If there are still problems with the drawings, the USPTO will notify the applicant, otherwise the drawings are accepted and not further notice is given.
  • Annotated DRawings: An examiner may require a marked-up version of the drawings
  • Time Limits: The Office can set the time period for when corrected drawings are due (37 CFR 1.85(a)) FAILURE TO CORRECT DRAWINGS WITHIN THE OFFICE’S DEADLINE WILL RESULT IN ABANDONMENT OF THE APP!

It’s Just a Model: Submitting Models & Specimens of Inventions (608.03; 37 CFR 1.91 in Charts):

  • Models & exhibits are generally not admitted for examination.
  • The applicant may file a petition under 37 CFR 1.91 to explain why it is necessary for a model to be submitted.
  • A model may be used for demonstrating the invention during an interview with the USPTO. (37 CFR 1.94) The model is only used for the demo, it should then be taken by the applicant/atty, or when the USPTO no longer needs the model the applicant must take it back at the applicant’s expense.

New Matter: Not after the app is filed! (608.04; 37 CFR 1.121(f) in Charts):

  • Review: The disclosure may rely on information contained in: The description, the drawings, and in the claims themselves (claims are allowed to have their own subject matter).
  • There are amendments that are allowed to come into an app that contain new matter, however, the USPTO will cancel the new matter out of the description, and any claims that rely on the new matter will also get canceled too.
  • Once the examiner determines that something is “new matter” that determination is not subject to petition or appeal.

What is new Matter (608.04(a)):

  • Matter not in the original description/drawings/claims.
  • Includes additional descriptions of: inherent characteristics, chemical/physical properties, new structural formulas.

New Matter added in Preliminary Amendment (that is present on the filing date of the App) (608.04(b)):

  • If the prelim amendment is on the same date as the main filing, it is considered part of the original disclosure. (but ones filed after the filing date are not, no new matter is allowed in them!)
  • If the app is filed on or after 20040921 the preliminary amendment is automatically treated as part of the original disclosure.
    • The rule before 20040921 is that the prelim. amendment may be considered part of the original filing if it was referenced in the original oath. If it is not, the applicant is required to fill out a supplemental oath to cover both the app and the amendment. –> Difference: In the new system, the oath is only needed when there is actually new matter in the amendment.
  • If the 37 CFR 1.63 oath does not include the preliminary amendment, then the USPTO will not look at the preliminary amendment for new matter, it is the applicant’s job to make sure there is no new matter in the preliminary amendment.
  • If there is new subject matter in the prelim amendment, then the applicant needs a 37 CFR 1.67 supplemental oath to cover the material in the amendment.
  • To get around this problem, the applicant can just incorporate the info in the amendment into the main application.
  • When an examiner determines that the amendment has new matter not covered in an oath he may require a supplemental oath for it. The applicant may:
    • 1. Submit the supplemental oath
    • 2. Cancel out the new matter & claims relying on it
    • 3. Request reconsideration.

Reviewing & Appealing the determination of “new matter” 608.04(c):
If new matter is only in an amendment to the spec. then the applicant may file a petition to review the examiner’s holding. However, if the new matter is part of the claims or affects the claims, the holding may be appealed, and should not be considered in a petition (even if the same new matter is also in the spec that would normally be petitioned).

Sequence Listings tables & Stuff on CDs: 608.05

  • Short source-code listings (<= 300 lines): Allowed to be submitted as a drawing, or part of the written spec.
  • Longer listings: Muste be submitted as ASCII files on CD
  • Tables: 1 table that is <= 50 pages must be part of the spec. or drawings.
  • Singles Tables > 50 pages OR if multiple tables in the app are > 100 pages, the tables may be submitted on CD.

The IDS (Information Disclosure Statement).(609)

Information Disclosure Statement: This disclosure is a list made by the applicant of other patents, patent apps (including foreign apps), publications, etc. that contain information related to prior art on the invention. There is a duty to disclose this information on the part of the applicant (if the applicant does not disclose it, then the patent could be held invalid later). Submitting an IDS is not the same thing as a patent search and is not considered a patent search by the Office.

More on 609 IDS (See 37 CFR 1.97, 1.98 in Charts):

  • Only applies to applications that will actually be examined (so this is only for NPAs, not PAs)
  • The IDS mechanism is how an applicant complies with his duties of disclosure under 37 CFR 1.56

609.01 Deadlines & Fees under 37 CFR 1.97(e):

  • 1. (a) For National Apps (not CPA’s) if IDS is filed within 3 months of filing or before the first office action whichever comes later: No fees
  • 1. (b) For National Stage apps within 3 months of entry onto the stage or before first Office action on the merits, whichever comes later: No fees/statements
  • 1.c For RCE’s and CPA’s before the first Office Action on merits: No fees
  • 2. If the IDS is filed after 1. above, but before the Final Office Action or Ex parte Quayle action: Applicant must file statement under 37 1.97(e) or pay fee under 37 CFR 1.17(p). (but not both)
  • 3. After 2 (after the final action) but either before or at the same time as paying the issue fee: Applicant must file statement under 37 1.97(e) and pay fee under 37 CFR 1.17(p). (in stage 3 you have to do both)
  • 4. After payment of issue fee: IDS WILL NOT BE CONSIDERED (only option is to withdraw patent for more examination, see below).

What does an IDS look like?

  • It is just a list of references to documents that could contain prior art, filled out on form: PTO/SB/08A
  • See MPEP 600-140 for an example list
  • Note that U.S. apps & patents are separated from foreign apps & patents
  • If an examiner sees an invalid entry he should and the invalid entry will not be considered as part of the disclosure.
  • There is more than just the first list though: (609.04)
    • There must be a legible copy of every foreign app or patent that is in the IDS.
    • A legible copy of every outside publication that was listed
    • If an unpublished US app is listed, then the portion of the spec/drawings/claims that are in question must be reproduced, unless the app is already available via the IFW system.
    • Exceptions: If the any of the above documents were already properly cited and included in a prior filing that prior filing had a proper IDS disclosing the same information, then simply referencing the prior app & IDS will be enough for disclosure purposes since the Office already has it on file.
  • Translations: If a document is not in English, then the applicant only has to provide a concise summary of the material contents in English. The examiner will only read the English summary, and any action taken will be based off of that information alone.

609.04: Filing an IDS during different stages of the Application Process: (37 CFR 1.97)

  1. Stage 1 IDS: Just file the IDS, as seen above, as long as it is within 3 months of filing, or before the first Office Action (for new National/National Stage apps) or just before the first Office Action (for CPA’s, RCE’s) there is no need to do anything else.
  2. Stage 2 IDS: This is after the period in Stage 1, but before the Final Office Action or Ex Parte Quayle (the app is substantively done but still has some formal errors to correct) is taken. (Basically, this is filing an IDS while the USPTO is actually investigating the patent). Here the applicant must:
    1. File a statement under 37 CFR 1.97(e) OR:
    2. Pay a fee under 37 CFR 1.17(p) (Do not do both though)
  3. Stage 3 IDS: The final action has been taken, but the fee payment has not been made yet. The applicant now has to pay the fee AND file a 37 CFR 1.97(e). Note: This gets sticky if the applicant actually knew about the information, it might be too late by Stage 3.
  4. Stage 4: NO IDS ALLOWED. However, the applicant may withdraw the application (in order to have the IDS considered) under 37 CFR 1.313 and have an RCE to continue the app.
    1. In order to get the RCE, the applicant must file a petition before the patent issues.
    2. After the RCE or (for design apps) CPA, the applicant must get the IDS in before the first Office Action on the merits. If this cannot be done, the applicant may request a 3 month suspension of the process under 37 CFR 1.103 in order to get the IDS in.

What does the 37 CFR 1.97(e) statement contain?

(e) A statement under this section must state either:

(1) That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or

(2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.

This means: a statement under the reg is only allowed when the information present in the IDS was not known to any applicant/atty or agent of record (1.56) more than 3 months before the IDS was filed, or that for foreign docs the actual citation of the information existed less than 3 months before the filing of the IDS. In plain English: The applicant can file this statement with the IDS if the prior art info only recently became available within the same 3 month time limit used for filing the IDS.

Reported on the Exam re: IDS

Tested on the exam: Each U.S. Patent in an IDS must be identified by inventor, patent number, and issue date (not by application number). Each publication in an IDS must be identified by publisher, any author, title, relevant pages, date, and place of publication.

Tested on the exam: If the disclosures of 2 or more patents or publications listed in an IDS are substantively cumulative, a copy of one may be submitted without copies of the other patents or publications if they are cumulative.

Tested on the exam: A properly filed IDS is not construed as a representation that a diligent and thorough search has been made.

Tested on the exam: Submission of an IDS after a notice of allowance has been received will not be considered a failure to engage in reasonable efforts to conclude prosecution if the information in the IDS was cited in a communication received by any individual designated in 37 CFR 1.56 not more than 30 days prior to the filing of the IDS.

More on Information Disclosure Statement

  • Applicant must disclose information that is “material to patentability,” usually done with an IDS
  • No need to perform a search
  • IDS’s are not permitted in provisional applications; nor are they permitted in the international stage of a PCT application

Content –

IDS’s must contain: a list of materials (patents, publications, other references) cited; legible copies of materials cited; if portion of a reference is cited, only such portion must be submitted. If not in English, must have: concise explanation of the relevance; or an English translation; can be satisfied by submitting English language version of foreign search report.

REVISION as per 6/30/03 – The Office hereby waives the requirement under 37 CFR 1.98 (a)(2)(i) for submitting a copy of each cited U.S. patent and each U.S. patent application publication for all U.S. national patent applications filed after June 30, 2003 and for all international applications that have entered the national stage under 35 USC § 371 after June 30, 2003.

Citing References –

A Form PTO-1449 is used. Examiner reviews, initials, and returns a copy.

  • US Patents: inventor, patent number, issue date
  • US Patent application publication: applicant, patent application publication number, publication date
  • US application: inventor, application number, filing date
  • Foreign patent or published foreign patent application: country or patent office which issued patent or published application, document number, publication date
  • Publications: publisher, author (if any), title, relevant pages of pub, date, place of publication

Time for Filing –

  • May be filed freely during: first three months after filing or entry into national stage; prior to any office action on the merits
  • Three month grace period does not apply to RCE/CPA – only before first OA
  • After these periods, IDS can be filed before a final office action/notice of allowance/other action terminating substantive pros; with fee or statement that info was disclosed in communication for foreign patent office no more than 3 months before filing of IDS; or no info was known 3 months prior.
  • After final office action or notice of allowance, must include both fee and statement
  • Once issue fee has been paid, no IDS will be accepted

National Stage Applications –

Ordinarily, an IDS is not necessary for references that were cited in the international stage proceeding, but if a continuing application is filed, copies of the references must be cited.

Third Party Submission

  • After publication of an application, a third party may submit materials for consideration
  • The submission must include: identification application by application number; fee; list of patents or publications submitted for consideration, including date of publication; copy of each listed patent or publication, or at least relevant parts; English language translation
  • Submission must be served upon applicant
  • Must not include any discussion or arguments
  • Limited to 10 references
  • Must be made earlier of within 2 months of publication date, or prior to NOA
  • May be submitted later, but only if references could not have been submitted earlier – with fee
  • Does not guarantee that references will be considered
  • Applicant should always submit IDS with same references
1 SeanNo Gravatar March 26, 2009 at 1:04 am

REVISION as per 6/30/03 – The Office hereby waives the requirement under 37 CFR 1.98 (a)(2)(i) for submitting a copy of each cited U.S. patent and each U.S. patent application publication for all U.S. national patent applications filed after June 30, 2003 and for all international applications that have entered the national stage under 35 USC § 371 after June 30, 2003.

Does this mean you don’t need to submit an IDS with US records anymore, but still need to cite all foreign records? Thank you.

2 StuartNo Gravatar June 8, 2009 at 3:27 am

It just means no need to submit the “copy” of any cited U.S. patent and each U.S. patent application; US records still need to be “listed” as usual. See. 37 CFR 1.98.

3 LaserGirlNo Gravatar February 15, 2013 at 1:49 pm

Believe there is an error under the heading ‘New Matter: Not after the app is filed!’: “Once the examiner determines that something is “new matter” that determination is not subject to petition or appeal.”
Petition/Appeal process is detailed in 608.04(c).

4 LaserGirlNo Gravatar February 15, 2013 at 2:23 pm

Regarding Stage 4 IDS, MPEP ed8Rev9 now requires that ‘IDS must accompany the RCE and the petition under 37 CFR 1.313(c)(2) if the IDS is the submission for the RCE’. The 3 month suspension can still be requested for a CPA.

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