Q) Omitted Items (10.02.34a)

by Lizzie on April 28, 2009 · 23 comments

in Exam Concepts, Exam Questions

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).

{ 23 comments… read them below or add one }

1 triedandtestedNo Gravatar June 23, 2009 at 8:54 pm

E is wrong because the 3 month time is 2 late (You have to respond within 2 months for notice of omitted items)

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2 NarNo Gravatar June 26, 2012 at 7:47 pm

However this can be extended upto 5 months by paying a late fee.

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3 NarNo Gravatar June 26, 2012 at 7:48 pm

another 5 months

4 BradNo Gravatar December 18, 2012 at 3:40 pm

E is also wrong because the answer says “must”. Jane has three options and is not required to take any single action, so answers B-E can all be discarded on that basis.

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5 SNo Gravatar March 13, 2010 at 2:15 pm

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?

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6 DYNo Gravatar March 14, 2010 at 2:35 pm

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.

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7 JeffNo Gravatar April 16, 2010 at 12:14 am

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.

8 qwackerNo Gravatar October 26, 2011 at 11:26 pm

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.

9 PeterNo Gravatar April 10, 2010 at 1:53 pm

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)”

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10 patenttipsNo Gravatar March 22, 2011 at 7:21 pm

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.

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11 fengyuwuzuNo Gravatar October 11, 2011 at 2:47 pm

about your note: where is MPEP says that “you MUST make a new provisional application”?

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12 qwackerNo Gravatar October 26, 2011 at 11:28 pm

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.

13 SoBeNo Gravatar October 11, 2011 at 6:08 pm

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.”

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14 zanNo Gravatar April 20, 2012 at 10:36 am

I know the rules have changed to where if you decide to do nothing after receiving a notice of omitted items, you must let the PO know that is your choice. What if you fail to let them know you’re choosing to do nothing?

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15 SabrinaNo Gravatar April 23, 2012 at 2:42 pm

Zan: Where is this rule change found?

Also, are you sure this rule change applies to this fact pattern? The excerpt from the MPEP seems to be right on point with answer choice A.

601.01(d)
I.APPLICATION ENTITLED TO FILING DATE
The mailing of a “Notice of Omitted Item(s)” will permit the applicant to: …
(C)accept the application as deposited in the USPTO… by ..:
(1)not filing a petition under 37 CFR 1.53(e) or 37 CFR 1.182 … THE FAILURE to file a petition under 37 CFR 1.53(e) or 37 CFR 1.182 WILL BE TREATED AS CONSTRUCTIVE ACCEPTANCE by the applicant of the application as deposited in the USPTO. The application will maintain the filing date as of the date of deposit of the application papers in the USPTO, … Amendment of the specification is required in a nonprovisional application to renumber the pages consecutively and … Such amendment should be by way of preliminary amendment submitted prior to the first Office action to avoid delays in the prosecution of the application.

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16 jkpatentlawNo Gravatar June 16, 2012 at 12:46 pm

I guess her response by renumbering the pages of the Spec is taken as “I am doing ‘nothing’ i.e. not going to submit any additional items and will take the original filing date please.”

However, per John White, if you file missing pages of the Spec and receive a Notice of Omitted Items and need to keep your original filing date (maybe you are up against a 102(b) bar date or something), you are supposed to do nothing and then notify the PTO of your intentions of doing nothing. By notifying them that you intend to “do nothing,” they know that you will be keeping your original filing date and not to expect additional items from you and to move on with examination.

17 zanNo Gravatar April 23, 2012 at 3:42 pm

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/omitteditems.pdf

See the last statement of 1st paragraph. Basically states that applicant is no longer allowed to accept the file as submitted (do nothing) without filing a reply to the notice. I remember John White speaking of the 2 instances that we have the option to do nothing – it’s still ok to do nothing in regards to NOI, but we must let the PO know that’s what we choose to do.

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18 SabrinaNo Gravatar April 23, 2012 at 9:42 pm

Thank you Zan: Here is my two cents worth (which may not be worth two cents or even be correct): Based on the document in your link, none of the answer choices would be correct; B, C, D, and E would be wrong based on above discussion of the use “must”, but now A would also be incorrect because it says “she need not respond to the Notice.”

Having said this, I want to caution you: The document in your link is dated Jan 2007 and indicates that the MPEP will be revised in due course–which, it does not appear to have been. Thus, while the document may be current procedure, it does not appear to be “tested material”.

I just checked and according to the upsto’s website, the tested material is found at: http://www.uspto.gov/ip/boards/oed/aia_regexamsourcematerial.jsp and does not include a link to this document.

Thus, if I see this question on the exam, I will ignore this document and pick A as the answer choice based on the quoted language of 601.01(d).

As an aside: It is not unusual for tests over laws (not just patent law) to be based on outdated laws and test answers to be incorrect based on the current state of the law. The important thing is to apply the law that is being tested to the test questions.

My strategy is:
If there is a date given on a question and that date antedates E8R8, I am going to go with the answer from the key even if it contradicts E8R8. [For example, Q) Time for Filing an Appeal Brief (4.03.39a)]
On the other hand, if E8R8 antedates the date on the question or there is no date given, I am going to analyze the question under E8R8 and pick that answer even if it does not match the correct answer according to the key.

I hope this helps…What are your thoughts?

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19 SabrinaNo Gravatar April 23, 2012 at 10:04 pm

Sorry for the multiple posts, but…I re-read 601.01 and I found the following:

If the OPAP reviews your application and sends you the Notice, you can just not reply and OPAP will treat this lack of reply as constructive acceptance of the application as is.

ON THE OTHER HAND, if the TC reviews your application and sends you the Notice, “If applicant is willing to accept the application, as filed, without all of the drawing figure(s) referred to in the application (item A above), applicant is REQUIRED TO submit (1) an amendment to the specification canceling all references to the omitted drawing figure(s) including any reference numerals shown only in the omitted drawing figure(s), (2) an amendment with replacement sheets of drawings in compliance with 37 CFR 1.121(d) renumbering the drawing figure(s) submitted on filing consecutively, and (3) a further amendment to the specification correcting references to drawing figure(s) to correspond with the relabeled drawing figure(s), both in the brief and detailed descriptions of the drawings. The amendment should be submitted in response to the Office action.”

So, the application located in the TC would probably go abandoned if no timely response is filed for the OA.

YIKES: This question does not say which entity sent out the Notice:( Hopefully this question is revised if it is currently part of the test-bank.

20 BradNo Gravatar December 18, 2012 at 3:48 pm

Sabrina, the section you quoted is from 601.01(g) and refers to omitted drawing pages, not omitted pages of the specification. Answer A is correct based on current MPEP 601.01(d).

21 BfusionNo Gravatar April 24, 2012 at 6:39 am

Sabrina and Zan,

In some ways…it seems the question is worded badly. As answer (A) states “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.”

The document Zan linked to says one can “accept the document as deposited” how? by filing an appropriate amendment….which, it seems, the rest of the answer covers:

“Jane will need to file an amendment renumbering the pages consecutively and canceling incomplete sentences caused by the missing page 5.”

Thus, I think (A) is still correct, becuase she IS responding to the notice (by sending in the amendment_

BUT: the REAL difference now is that if you elect to “accept as deposited” you MUST respond within the set time frame (in the past, apparently, there was no time frame to reply, and thus, a “non reply” to the office action would automatically bump the app into this category of “accepted as stands.” This is no longer the case, as there is a time restriction now put on.

my 1.5 cents

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22 zanNo Gravatar April 24, 2012 at 10:57 am

Thanks, guys. I had a few questions I was going to email J. White. Is there anything you’d like me to ask him? He’d rather I send several questions at one time than one here and one there…..

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23 youngNo Gravatar May 16, 2016 at 8:24 pm

Under MPEP R-07.2015, the answer choice (A) is incorrect; the Applicant can accept the application as filed (w/ missing pages) by filing a substitute specification by the 2-month period. “Failure to timely reply to the OPAP notice in a nonprovisional application will result in abandonment of the application.” MPEP 601.01(d).

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