Test takers report a #20 from the October 2003 (AM) patent bar exam is in the current question pool.
20. On January 3, 2003, a registered practitioner filed a continuation application that includes a benefit claim to a prior-filed application. The practitioner simultaneously filed in the prior filed application an express abandonment in favor of a continuing application. The prior application contained five drawing figures described in the specification. However, the continuation application contains only four of the five drawing figures. The specification of the continuation application did not include a complete description of the missing drawing figure. A postcard from the USPTO, listing the contents of the continuation application, contains a note that only four drawing figures were received. The practitioner inadvertently omitted one of the drawing figures mentioned in the specification when he filed the continuation application. The missing drawing figure shows a claimed feature of the invention. On February 10, 2003, the practitioner received a Notice of Omitted Item(s) properly according a filing date of January 3, 2003 for the continuation application without the missing drawing figure and notifying the applicant that the drawing is missing. Which of the following procedures for filing the missing drawing would comply with the patent laws, rules and procedures as related in the MPEP for according the continuation application a January 3, 2003 filing date with the five drawing figures that were present in the application?
(A) The practitioner files the missing drawing figure in response to the Notice of Omitted Item(s) within the time period set forth in the notice.
(B) The practitioner files the missing drawing figure and an amendment to the specification to add a complete description of the missing drawing figure in response to the Notice of Omitted Item(s) within the time period set forth in the notice.
(C) The practitioner files an amendment to cancel the description of the missing drawing figure from the specification of the continuation application.
(D) If the continuation application as originally filed includes an incorporation by reference of the prior-filed application to which the benefit is claimed, the practitioner can file the missing drawing figure any time prior to the first Office action.
(E) The practitioner files the missing drawing figure accompanied by a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(h) only alleging that the drawing figure indicated as omitted was in fact deposited with the USPTO with the application papers.
ANSWER: (D) is the most correct answer. MPEP § 201.06(c), under the heading “INCORPORATION BY REFERENCE”, subheading “B. Application Entitled to a Filing Date,” states that “[i]f the application as originally filed includes a proper incorporation by reference of the prior application(s), an omitted specification page(s) and/or drawing figure(s) identified in a “Notice of Omitted Item(s)” may be added by amendment provided the omitted item(s) contains only subject matter in common with such prior application(s). In such case applicant need not respond to the “Notice of Omitted Item(s).” Applicant should submit the amendment adding the omitted material prior to the first Office action to avoid delays in the prosecution of the application.” (A) and (B) are incorrect because the application filing date will be the date of the filing of the missing drawing figure. See MPEP § 601.01(g). Furthermore, a priority claim under 35 U.S.C. § 120 in a continuation or divisional application does not amount to an incorporation by reference of the application to which priority is claimed. See MPEP § 201.06(c). (C) is incorrect. The continuation application will not be accorded with a filing date of January 3, 2003 with the missing drawing figure. (E) is incorrect because a petition under 37 CFR § 1.53(e) will not be granted if the missing drawing figure is inadvertently omitted by the applicant and not in fact deposited with the USPTO with the application papers.
NOTE A TWEAK TO THE RULES SINCE 2004:
AN EXPLICIT INCORPORATION BY REFERENCE IS NOT NECESSARY – BUT ENCOURAGED NONETHELESS
SEE MPEP 201.06
For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120 and 37 CFR 1.78for benefit of a prior-filed nonprovisional application or international application designating the U.S. that was present on the filing date of the continuation or divisional application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(a). The purpose of 37 CFR 1.57(a) is to provide a safeguard for applicants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. For applications filed on or after September 21, 2004, applicants are encouraged to provide an explicit incorporation by reference statement to the prior-filed application(s) for which benefit is claimed under 35 U.S.C. 120 if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material pursuant to 37 CFR 1.57(a). See 37 CFR 1.57(b) and MPEP § 608.01(p) for discussion regarding explicit incorporation by reference.
An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)). If an incorporation by reference statement is included in an amendment to the specification to add a benefit claim under 35 U.S.C. 120 after the filing date of the application, the amendment would not be proper. When a benefit claim under 35 U.S.C. 120 is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement of the prior application. See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980).
It seems that even answer (D) is incorrect as the practitioner MUST submit the missing drawing within two months and NOT before the first OA.
601.01(g)Applications Filed Without All Figures of Drawings
(C)(2)
D is correct. The 2 month rule only applies to a reply to the Notice of Omitted Items. Here, the applicant/agent is not replyin to the notice of Omitted Items. The notice is ignored. Instead, the applicant/agent is amending figures back in on the ground of “incorporation by reference”.
Also to sum BigBadVoodoDadd’s tweak, if there is no incopration by reference statment as given in D, but there is a priority claim perfected, the priorty claim is considerred as an incorporation by reference statement. You can still amending the figures back in.
A perfected priority claim serves as an automatic IBR as to inadvertently omitted items only in apps filed AFTER sept 24, 2004.
Miranda is correct, ok, here is what I think
AFTER sept 21, 2004., priority claim implies can be treated as IBR
You can amend figures back in based on this implied IBR, provided that the missing figures are “inadvertently omitted”.
Time to do this? according to 601.01(g) and 201.17, unextenable two month from notice of omitted items.
“Such amendment should be by way of a preliminary amendment and the preliminary amendment must be submitted within 2 months from the date of the “Notice of Omitted Item(s).”
However, do you really cannot do it after two months? Not really. You can do it even after final OA
201.17
While an amendment to include inadvertently omitted material may be submitted in reply to a final Office action which first raises the issue of the omitted material, such an amendment does not have a right of entry as it would be considered as an amendment under 37 CFR 1.116. If the application is abandoned or the prosecution is closed, applicant may file a petition to revive an application under 37 CFR 1.137 and/or a request for continued examination under 37 CFR 1.114, as appropriate, in order to restore the application to pending status and/or reopen prosecution in the application.
So according these, disregarding the filing date, D is still OK, not perfect.
Before sept 21, 2004., priority claim implies canNOT be treated as IBR
If you have explicit IBR, then you can amend figures back in. (also, it is not limited to “inadvertently omitted” materials. This still applies to App after Sep 21, 2004 with explict IBR, so better to add it and not relying on only priority, in real practice)
Time to do it? ANSWER D
201.06(c)
If the Office identified the omitted item(s) in a “Notice of Omitted Item(s),” applicant need not respond to the “Notice of Omitted Item(s).” Applicant should, however, submit the amendment adding the omitted material prior to the first Office action to avoid delays in the prosecution of the application.
Briefly,
Before sept 21, 2004
If only priority claim (not IBR) -> IBR insertion (X), amendment (X)
After sept 21, 2004
If only priority claim(not IBR) -> IBR insertion (X), amendment by priority assertion(O)
If IBR -> amendment is OK regardless of the above period.
Is this right?