34. Jane files a nonprovisional application with the USPTO containing at least one drawing figure under 35 USC 113 (first sentence) and at least one claim. Subsequently, Jane receives a “Notice of Omitted Items” from the USPTO indicating that the application which Jane filed lacks page 5 of the specification. Assuming that the application without page 5 satisfies 35 USC 112, which of the following statements is true based on proper USPTO practice and procedure?
(A) If Jane is willing to accept the application as filed, she need not respond to the Notice, and the Office will accord the filing date of the original application. Jane will need to file an amendment renumbering the pages consecutively and canceling incomplete sentences caused by the missing page 5.
(B) Jane must promptly submit the omitted page and accept an application filing date as of the date of submission of the omitted page.
(C) Jane must promptly submit the omitted page and will be accorded a filing date as of the date of filing the original application.
(D) Within 3 months of the Notice date, Jane must file an affidavit asserting that page 5 was in fact deposited in the USPTO with the original application. Jane will be accorded the filing date of the original application.
(E) Within 3 months of the Notice date, Jane must file a proper petition asserting that page 5 was in fact deposited in the USPTO with the original application, accompanied by the proper petition fee and evidence that page 5 was in fact deposited as alleged. Jane will be accorded the original filing date of the application.
34. ANSWER: (A) is correct and (B), (C), (D) and (E) are wrong. MPEP § 601.01(d).
{ 10 comments… read them below or add one }
E is wrong because the 3 month time is 2 late (You have to respond within 2 months for notice of omitted items)
I know that A is correct but I think B should also be the correct answer because according to 601.01(d),
“The mailing of a “Notice of Omitted Items” will permit the applicant to either:
A) Promptly establish prior receipt in the PTO of the page(s) at issue
or
B) Promptly submit the omitted page(s) in a NPA and accept the date of such submission as the application filing date.
I think the B choice of the above choices fulfills the second choice.
What am I missing here?
Jane “must” promptly submit the omitted page and accept an application filing date as of the date of submission of the omitted page.
As 601.01(d) indicates an option between A) or B), it makes “must” a wrong choice.
This has to be one of the most nit-picky questions in the old exams if the answer hinges on the inclusion of “must” in the answer.
It’s an important concept if you’re looking at a reference dated between the original filing and the date of submission of the omitted page.
I struggled with this same question. I think B wrong because it does not further specify “An applicant desiring to submit the omitted page(s) in a nonprovisional application and accept the date of such submission as the application filing date must, within 2 months from the date of the “Notice of Omitted Item(s),” file any omitted page(s) with an oath or declaration in compliance with 37 CFR 1.63 and 37 CFR 1.64 referring to such page(s) and a petition under 37 CFR 1.182 with the petition fee set forth in 37 CFR 1.17(f)”
B doesn’t seem to be the best choice. A is correct and E is good but not within the time period.
**Note, this is a non-provisional, there is another question that asks about missing drawing in a provisional. You can not file petition in a provisional to get an earlier date, instead, you MUST make a new provisional application.
about your note: where is MPEP says that “you MUST make a new provisional application”?
Indeed, why not file a complete nonprovisional and claim priority to the provisional. The missing page will have the later filing date, but the rest of the app will claim to the provisional’s filing date. I can’t think of a need to correct a provisional with a missing page.
601.01(d)Application Filed Without AllPages of Specification
I.APPLICATION ENTITLED TO FILING DATE
(C) (2)
…”Likewise, in view of the relatively low filing fee for provisional applications, and the USPTO’s desire to minimize the processing of provisional applications, the USPTO will not grant petitions under 37 CFR 1.182 to accept omitted page(s) and accord an application filing date as of the date of such submission in provisional applications. The applicant should simply file a new completed provisional application.”