601.01(a) Nonprovisional Applications Filed Under 35 U.S.C. 111(a) [R-07.2022]

I. APPLICATION FILING REQUIREMENTS

The procedure for filing a nonprovisional application under 35 U.S.C. 111(a) is set forth in 37 CFR 1.53(b) and 37 CFR 1.53(d). 37 CFR 1.53(b) may be used to file any original, reissue, or substitute nonprovisional application and any continuing application, i.e., continuation, divisional, or continuation-in-part.

Except for design applications, the filing date for applications filed under 35 U.S.C. 111 on or after December 18, 2013 is the date on which a specification, with or without claims, is received in the Office. The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as required by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office. Effective for applications filed on or after December 18, 2013, 37 CFR 1.53(b) was amended to implement the changes to 35 U.S.C. 111(a) and 35 U.S.C. 171 by the Patent Law Treaties Implementation Act of 2012 (PLTIA) (Public Law 112-211). 35 U.S.C. 111(a) now provides minimal formal requirements necessary for an application to be entitled to a filing date to safeguard against the loss of a filing date due to a technicality. However, these minimal formal requirements should not be viewed as prescribing a best practice for the preparation and filing of a patent application. The preparation of claims to any claimed invention for which patent protection is desired and the inclusion of such claims with the application on filing will help ensure that the application satisfies the disclosure requirements of 35 U.S.C. 112(a) for any such claimed invention.

For applications filed under 35 U.S.C. 111(a) prior to December 18, 2013, a filing date is assigned to a nonprovisional application as of the date a specification containing a description and claim and any necessary drawings are filed in the U.S. Patent and Trademark Office (Office). See pre-PLT (AIA) 37 CFR 1.53(b).

Failure to meet any of the requirements in 37 CFR 1.53(b) will result in the application being denied a filing date. The filing date to be accorded such an application is the date on which all of the requirements of 37 CFR 1.53(b) are met.

37 CFR 1.53(d) may be used to file either a continuation or a divisional application (but not a continuation-in-part) of a design application. The prior nonprovisional application must be a design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b), except for the inventor’s oath or declaration if the continued prosecution application (CPA) is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor. Any application filed under 37 CFR 1.53(d) must disclose and claim only subject matter disclosed in the prior nonprovisional application and must name as inventors the same or less than all of the inventors named in the prior nonprovisional application. Under 37 CFR 1.53(d), the filing date assigned is the date on which a request, on a separate paper, for an application under 37 CFR 1.53(d) is filed. An application filed under 37 CFR 1.53(d) must be filed before the earliest of:

• (A) payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted in the prior application;
• (B) abandonment of the prior application; or
• (C) termination of proceedings on the prior application.

The filing fee, search fee and examination fee for an application filed under 37 CFR 1.53(b) or 37 CFR 1.53(d) and the oath or declaration for an application filed under 37 CFR 1.53(b) can be submitted after the filing date. In addition, for applications, other than design applications, filed under 35 U.S.C. 111(a) on or after December 18, 2013, the claims and drawings may be submitted after the filing date, within such period and under such conditions, including the payment of a surcharge, as prescribed by the Office. See subsection II below for more information on completion of an application subsequent to filing. However, no amendment (including the submission of claims and drawings) may introduce new matter into the disclosure of an application after its filing date. Drawings should be submitted on filing if necessary for the understanding of the invention.

If the required basic filing fee is not paid during the pendency of the application, the application will be disposed of.

The basic filing fee must be paid within the pendency of a nonprovisional application in order to permit benefit of the application to be claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) in a subsequent nonprovisional application, international application, or international design application.

See 37 CFR 1.78. Copies of an application will be provided by the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b) unless the application has been disposed of (see 37 CFR 1.53(e) and (f)).

37 CFR 1.53(h) indicates that a patent application will not be forwarded for examination on the merits until all required parts have been received, except applications filed on or after September 16, 2012 will be forwarded for examination even if lacking the inventor’s oath or declaration provided that a compliant application data sheet (ADS) is filed.

II. COMPLETION OF NONPROVISIONAL APPLICATION UNDER 35 U.S.C. 111 SUBSEQUENT TO FILING

For applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, except for design applications, a filing date is granted to a nonprovisional application when a specification, with or without claims, is received in the Office. The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as required by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office.

For applications filed prior to December 18, 2013, a filing date is granted to a nonprovisional application for patent that includes at least a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to 37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any drawing referred to in the specification or required by 37 CFR 1.81(a), which is filed in the U.S. Patent and Trademark Office.

A.Completion of Nonprovisional Application That Is Filed On or After December 18, 2013 And Is Not A Design Application

[Editor Note: See subsection B., below, for information that pertains to all applications filed under 35 U.S.C. 111(a) on or after September 16, 2012 (including utility and plant patent applications filed on or after December 18, 2013 and design patent applications). See subsection C., below, for information pertaining to applications filed under 35 U.S.C. 111(a) before September 16, 2012.]

If an application which has been accorded a filing date does not include the appropriate filing fee, search fee, examination fee, or inventor’s oath or declaration, applicant will be so notified in accordance with 37 CFR 1.53(f). See subsection II.B. below for information regarding completion of a nonprovisional application that is missing the appropriate filing fee, search fee, examination fee, or inventor’s oath or declaration.

If an application which has been accorded a filing date does not include at least one claim, the applicant will be notified and given a time period to file claim(s) and pay the surcharge, if required by 37 CFR 1.16(f), to avoid abandonment of the application provided the applicant has given a correspondence address. If the applicant failed to provide a correspondence address, the applicant has three months from the filing date of the application within which to file claim(s) and pay the surcharge required by 37 CFR 1.16(f) to avoid abandonment of the application. Therefore, an application filed without any claims will be treated in a manner analogous to how an application without the filing fee, search fee, or examination fee is treated. See subsection B. below for more information.

If an application which has been accorded a filing date does not include any drawings, see MPEP § 601.01(f) for information on completing the application. If an application which has been accorded a filing date but is without all the figures of drawings, see MPEP § 601.01(g) for information on completing the application.

B.Completion of Nonprovisional Application, Including Design Application, Filed On or After September 16, 2012

[Editor Note: See subsection A., above, for specific information regarding applications that are filed under 35 U.S.C. 111(a) on or after December 18, 2013 and are not design applications. See subsection C., below, for applications filed before September 16, 2012.]

If an application which has been accorded a filing date does not include the appropriate filing fee, search fee, examination fee, or inventor’s oath or declaration, applicant will be so notified in accordance with 37 CFR 1.53(f).

For applications filed before September 16, 2012, the Office issued a Notice to File Missing Parts if an application under 37 CFR 1.53(b) did not contain the basic filing fee, the search fee, or the examination fee, or the inventor’s oath or declaration, and the applicant was given a time period (usually two months) within which to file the missing basic filing fee, the search fee, the examination fee, or the inventor’s oath or declaration and pay the surcharge required by 37 CFR 1.16(f) to avoid abandonment. See subsection II.C. below for additional information regarding completion of a nonprovisional application filed before September 16, 2012.

For applications filed on or after September 16, 2012, the former missing parts practice under pre-AIA 37 CFR 1.53(f) was revised to allow applicants to postpone filing the inventor’s oath or declaration until the application is otherwise in condition for allowance. 37 CFR 1.53(f) was further revised, effective December 18, 2013, to require that, for applications filed on or after September 16, 2012, the inventor’s oath or declaration in compliance with 37 CFR 1.63 or a substitute statement in compliance with 37 CFR 1.64 must be filed no later than the date the issue fee is paid to avoid abandonment of the application. This time period is not extendable under 37 CFR 1.136 (see 37 CFR 1.136(c)). The Office may dispense with the notice under 37 CFR 1.53(f)(1) if each required oath or declaration in compliance with 37 CFR 1.63 or substitute statement in compliance with 37 CFR 1.64 has been filed before the application is in condition for allowance.

37 CFR 1.53(f)(1) provides for a notice (if the applicant has provided a correspondence address) if the application does not contain the basic filing fee, the search fee, or the examination fee, or if the application under 37 CFR 1.53(b) does not contain the inventor’s oath or declaration. 37 CFR 1.53(f)(1) provides that applicant must pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by 37 CFR 1.16(f) within the time period set in the notice to avoid abandonment.

Section 1.53(f)(3) (discussed subsequently) sets forth the time period for filing the inventor’s oath or declaration in an application under 37 CFR 1.53(b) and provides the conditions under which an applicant may postpone filing the inventor’s oath or declaration until the application is otherwise in condition for allowance.

37 CFR 1.53(f)(2) provides for the situation where applicant has not provided a correspondence address in an application under 37 CFR 1.53(b), and the application does not contain the basic filing fee, the search fee, or the examination fee, or does not contain the inventor’s oath or declaration.37 CFR 1.53(f)(2) provides that if the applicant has not provided a correspondence address, the applicant must pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by 37 CFR 1.16(f), within three months from the filing date of the application to avoid abandonment.

37 CFR 1.53(f)(3) sets forth the time period for filing the inventor’s oath or declaration in an application under 37 CFR 1.53(b) and provides the conditions under which an applicant may postpone filing the inventor’s oath or declaration until the application is otherwise in condition for allowance. Section 1.53(f)(3) specifically provides that the inventor’s oath or declaration in an application under 37 CFR 1.53(b) must also be filed within the period specified in 37 CFR 1.53(f)(1) or (f)(2), except that the filing of the inventor’s oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in 37 CFR 1.53(f)(3)(i) through (f)(3)(ii). This requires payment of the surcharge under 37 CFR 1.16(f) if the inventor’s oath or declaration (executed by or with respect to each inventor) is not submitted on filing of the application. If the surcharge is not paid at the time the application is filed, the Office will send a Notice to File Missing Parts requiring the surcharge. If, however, a general authorization to charge any required fees to a deposit account (that covers fees under 37 CFR 1.16) is submitted on filing of the application, the Office will charge the surcharge in accordance with the deposit account authorization. Payment of the surcharge cannot be postponed until a Notice of Allowance issues or payment of the issue fee but must be paid in the time period specified in 37 CFR 1.53(f)(1) or 37 CFR 1.53(f)(2).

37 CFR 1.53(f)(3)(i) provides that the application must be an original (non-reissue) application that contains an application data sheet in accordance with 37 CFR 1.76 identifying: (1) each inventor by their legal name; and (2) a mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor. The applicant must file an oath or declaration in compliance with 37 CFR 1.63, or substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor no later than the date on which the issue fee is paid. See 35 U.S.C. 115(f).

If an application under 37 CFR 1.53(b) does not include the inventor’s oath or declaration but does contain the applicable filing fees (basic filing fee, search fee, the examination fee, any applicable excess claims fee, and any applicable application size fee), the surcharge required by 37 CFR 1.16(f) (for filing the oath or declaration later than the filing date), and a signed application data sheet providing the information required by 37 CFR 1.53(f)(3)(i), the Office will not issue a Notice to File Missing Parts requiring the applicant to file the inventor’s oath or declaration.

If an application under 37 CFR 1.53(b) that does not contain the inventor’s oath or declaration also does not contain the applicable filing fees, or the surcharge required by 37 CFR 1.16(f), or a signed application data sheet providing the information required by 37 CFR 1.53(f)(3)(i), the Office will issue a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing parts. While the inventor’s oath or declaration will not be required to be filed within the period for reply to the Notice to File Missing Parts if the applicant provides a signed application data sheet providing the information required by 37 CFR 1.53(f)(3)(i), any required filing fees and surcharge required by 37 CFR 1.16(f) must be filed within the period for reply to the Notice to File Missing Parts to avoid abandonment.

If an application is in condition for allowance but does not include an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor, the Office will issue a “Notice of Allowance and Fee(s) Due” (PTOL-85) together with a “Notice of Allowability” (PTOL-37) including a “Notice Requiring Inventor’s Oath or Declaration” (PTOL-2306) requiring the applicant to file an oath or declaration in compliance with 37 CFR 1.63, or substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor, no later than the date of payment of the issue fee to avoid abandonment. If applicant receives a “Notice Requiring Inventor’s Oath or Declaration” and fails to file a proper reply to the notice before or with the payment of the issue fee, the application will be regarded as abandoned. See 37 CFR 1.53(f)(3)(ii).

C.Completion of Nonprovisional Application Filed Before September 16, 2012

[Editor Note: See subsections A. and B., above, for applications filed under 35 U.S.C. 111 on or after December 18, 2013. See subsection B., above, for applications filed on or after September 16, 2012.]

If an application which has been accorded a filing date does not include the appropriate filing fee, search fee, examination fee, or oath or declaration, applicant will be so notified in accordance with pre-AIA 37 CFR 1.53(f) and given a period of time within which to file the missing parts to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) in order to prevent abandonment of the application

Applicants should submit a copy of any notice to file missing parts or notice of incomplete application with the reply submitted to the U.S. Patent and Trademark Office, unless the reply is being submitted via the USPTO patent electronic filing system. Applicants should also include the application number on all correspondence to the Office. These measures will aid the Office in matching papers to applications, thereby expediting the processing of applications.

In order for the Office to so notify the applicant, a correspondence address must also be provided in the application. The correspondence address may be different from the mailing (post office) address of the applicant. For example, the address of applicant’s registered attorney or agent may be used as the correspondence address. If applicant fails to provide the Office with a correspondence address, the Office will be unable to provide applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f). In such a case, applicant will be considered to have constructive notice as of the filing date that the application must be completed within two months from the filing date before abandonment occurs per pre-AIA 37 CFR 1.53(f). This time period may be extended pursuant to 37 CFR 1.136.

The oath or declaration filed in reply to such a notice under pre-AIA 37 CFR 1.53(f) must be executed by the inventors and must identify the specification and any amendment filed with the specification which includes subject matter not otherwise included in the specification (including claims) or drawings of the application as filed. See MPEP § 602. If an amendment is filed with the oath or declaration filed after the filing date of the application, it may be identified in the oath or declaration but may not include new matter. No new matter may be included after the filing date of the application. See MPEP § 608.04(b). If the oath or declaration improperly refers to an amendment filed after the filing date of the application which contains new matter, a supplemental oath or declaration will be required pursuant to pre-AIA 37 CFR 1.67, deleting the reference to the amendment containing new matter. If an amendment is filed on the same day that the application filed under pre-AIA 37 CFR 1.53(b) is filed it is a part of the original application papers and the question of new matter is not considered. Similarly, if the application papers are altered prior to execution of the oath or declaration and the filing of the application, new matter is not a consideration since the alteration is considered as part of the original disclosure.

III. APPLICATION UNDER 35 U.S.C. 111(a) FILED BY REFERENCE

Effective December 18, 2013, title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions of the Patent Law Treaty. Section 201(a) of the PLTIA amended 35 U.S.C. 111 to add 35 U.S.C. 111(c). As provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application. 35 U.S.C. 111(c) specifically provides that the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under 35 U.S.C. 111(a) to a previously filed application (specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed) shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. 35 U.S.C. 111(c) further provides that a copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director, and that a failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. 35 U.S.C. 111(c) finally provides that such an application shall be treated as having never been filed, unless: (1) the application is revived under 35 U.S.C. 27; and (2) a copy of the specification and any drawings of the previously filed application are submitted to the Director.

Effective December 18, 2013, 37 CFR 1.57 was amended to implement the reference filing provisions of 35 U.S.C. 111(c). 37 CFR 1.57(a) now provides that, subject to the conditions and requirements of 37 CFR 1.57(a), a reference, made in the English language in an application data sheet (ADS) in accordance with 37 CFR 1.76 upon the filing of an application under 35 U.S.C. 111(a), to a previously filed application, indicating that the specification and any drawings of the application under 35 U.S.C. 111(a) are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a) for purposes of a filing date under 37 CFR 1.53(b). Thus, the specification and any drawings of the previously filed application will be considered in determining whether an application under 35 U.S.C. 111(a) filed by reference under 37 CFR 1.57(a) is entitled to a filing date under 37 CFR 1.53(b). When an application for a design patent includes a reference to a previously filed application under 35 U.S.C. 111(c), the previously filed application must include at least one claim. 35 U.S.C. 171 provides that the filing date of an application for a design patent is the date on which the specification as prescribed by 35 U.S.C. 112, which includes at least one claim, and any required drawings are filed.

In a reference filing under 37 CFR 1.57(a), the reference to a previously filed application in an ADS is not sufficient to establish a priority or benefit claim to that previously filed application. Reference filing information is provided in a section of the ADS that is separate from the foreign priority information section and the domestic benefit claim information section. See MPEP § 211et seq. for information regarding domestic benefit claims and MPEP § 213et seq. for information regarding claims for foreign priority.

The PLT and the Regulations under the PLT provide for the establishment of Model International Forms (PLT Model forms). The PLT Model forms may be found on WIPO’s Internet website at https://wipolex.wipo.int/en/text/289773. The requirement for a reference to the previously filed application in an ADS will be satisfied by the presentation of such reference to the previously filed application on the Patent Law Treaty Model International Request Form (PLT Model Request form). Applicants may use the PLT Model Request form for national applications under 35 U.S.C. 111 filed in the USPTO or national applications filed in other PLT countries. However, as provided in 37 CFR 1.76(d)(2), information in an ADS will govern when inconsistent with the information supplied at any time in PLT Model forms. Furthermore, if applicants want to postpone submission of the inventor’s oath or declaration until the application is in condition for allowance, an ADS that provides the inventor information is required. Accordingly, the use of an ADS to supply application information for reference filing is encouraged.

If the applicant has provided a correspondence address (37 CFR 1.33(a)), the applicant will be notified and given a period of time within which to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application and the fee required by 37 CFR 1.17(i) if it is in a language other than English, and pay the surcharge required by 37 CFR 1.16(f), to avoid abandonment. Such a notice may be combined with a notice under 37 CFR 1.53(f) (e.g., a notice requiring that the applicant provide at least one claim and pay the filing fees). See 37 CFR 1.57(a)(1).

If the applicant has not provided a correspondence address (37 CFR 1.33(a)), the applicant has three months from the filing date of the application under 35 U.S.C. 111(a) filed by reference under 37 CFR 1.57(a) to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application and the fee required by 37 CFR 1.17(i) if it is in a language other than English, and pay the surcharge required by 37 CFR 1.16(f), to avoid abandonment. See 37 CFR 1.57(a)(2).

In response to a notice requiring a copy of the specification and drawings from the previously filed application, applicants must submit an actual copy of the specification (including any claims) and any drawings of the previously filed application without any modifications. If the specification and drawings submitted in response to the notice are modified, i.e., updated, corrected, or reformatted in any manner, such modified specification and any modified drawings would not satisfy the copy requirement of 35 U.S.C. 111(c) and 37 CFR 1.57(a). Any desired changes to the copy of the previously filed application must be made by way of an amendment under 37 CFR 1.121 without adding new matter.

An application abandoned under 37 CFR 1.57(a)(1) or (a)(2) shall be treated as having never been filed, unless: (1) the application is revived under 37 CFR 1.137; and (2) a copy of the specification and any drawings of the previously filed application are filed in the Office. See 37 CFR 1.57(a)(3).

An applicant may also claim priority to or the benefit of an application filed by reference under 35 U.S.C. 111(c) and 37 CFR 1.57(a). However, the phrase ”treated as having never been filed” in 35 U.S.C. 111(c) and 37 CFR 1.57(a)(3) precludes an applicant from claiming priority to or the benefit of an application filed by reference that has been abandoned under 35 U.S.C. 111(c) and 37 CFR 1.57(a)(1) or 1.57(a)(2). An applicant may claim priority to or the benefit of an application abandoned under 35 U.S.C. 111(c) and 37 CFR 1.57(a)(1) or (a)(2) only if the application is revived under 37 CFR 1.137 and a copy of the specification and any drawings of the previously filed application are submitted to the Office.

A certified copy of the previously filed application must be filed in the Office within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, unless the previously filed application is an application filed under 35 U.S.C. 111 or 35 U.S.C. 363, or the previously filed application is a foreign priority application and the conditions set forth in 37 CFR 1.55(h) are satisfied with respect to such foreign priority application. See 37 CFR 1.57(a)(4).

If a certified copy is required under 37 CFR 1.57(a)(4) and it is not filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, the certified copy must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g). The requirement for a certified copy of a previously filed foreign application is to ensure that the copy of the specification and any drawings subsequently provided by the applicant correspond to the specification and any drawings of the previously filed foreign application. The interim copy provision of 37 CFR 1.55(j) is not applicable to the requirement for a certified copy of a previously filed foreign application in an application filed by reference under 35 U.S.C. 111(c) and 37 CFR 1.57(a).

Applicants filing by reference under 35 U.S.C. 111(c) and 37 CFR 1.57 should take care to ensure that the application number, filing date, and intellectual property authority or country of the previously filed application is accurately specified on the ADS as the specification and drawings of the application specified on the ADS is the specification and drawings of the application being filed by reference under 35 U.S.C. 111(c) and 37 CFR 1.57. If an applicant specifies an application number, filing date, or intellectual property authority or country of an application other than the application number, filing date, or intellectual property authority or country of the intended previously filed application on the ADS (i.e., the applicant mistypes the application number, filing date, or intellectual property authority or country on the ADS), the applicant may file a petition under 37 CFR 1.53 to have the application accorded a filing date as of the date the specification and drawings of the intended previously filed application is filed in the Office using that specification and drawings (rather than the specification and drawings of the application specified on the ADS). Simply submitting the specification and drawings of the intended previously filed application without such a petition under 37 CFR 1.53 in reply to a notice under 37 CFR 1.57(a) requiring the specification and drawings of the application specified on the ADS will result in the submission being treated as an incomplete reply. A reference filing statement made upon filing cannot be rescinded because the reference to the previously filed application constitutes the specification and any drawings of the instant application. See 35 U.S.C. 111(c). Accordingly, to avoid the risk of incorrect filings and the required surcharge, applicants should simply file a copy of the specification and drawings of the previously filed application, if available, instead of relying upon the reference filing provisions.

If the previously filed application is also a priority application under 35 U.S.C. 119(a) through (d) and (f), 172, 35 U.S.C. 365(a) or (b), or 35 U.S.C. 386(a) or (b) and 37 CFR 1.55, an applicant should also consider filing a copy of the specification and drawings of the previously filed application in the Office no later than fourteen month from the filing date of the previously filed application (regardless of the time period provided in 37 CFR 1.57(a)) to avoid the loss of the right of priority under 37 CFR 1.55 in the event that the application number, filing date, or intellectual property authority or country of an application specified on the ADS is not the application number, filing date, or intellectual property authority or country of the intended previously filed application.

An application filed to obtain a filing date which includes both a reference to a previously filed application as provided for in 37 CFR 1.57(a) and application papers including a specification and drawings will be processed as a reference filing and applicant will be charged the surcharge under 37 CFR 1.16(f) even though a specification and drawings were submitted with the reference filing. The ADS form indicates that “the description and any drawings of the present application are replaced by this reference to the previously filed application.” Accordingly, the Office will send out a notice (e.g., Notice to File Missing Parts) requiring the surcharge and a copy of the specification and any drawings. Applicants must respond to the notice by filing a copy of the specification and any drawings of the previously filed application or by stating that the specification and drawings submitted on filing is a copy of the specification and drawings of the previously filed application. If the specification and drawings submitted on filing were not a copy of the specification and drawings of the previously filed application but instead were modified, i.e., updated, corrected, or reformatted in any manner, such modified specification and any modified drawings would not satisfy the copy requirement of 35 U.S.C. 111(c) and 37 CFR 1.57(a). In response to the notice, applicant must submit a copy of the specification and any drawings of the previously filed application. Any desired changes to the copy of the previously filed application must be made by way of an amendment under 37 CFR 1.121 without adding new matter. The modified specification and any drawings that were submitted on filing would not constitute the specification and drawings of the instant application and thus would not be used for examination purposes. However, applicant may file a petition under 37 CFR 1.182, including the fee under 37 CFR 1.17(f), requesting that the modified specification and any drawings submitted on filing be removed from the file of the application filed by reference, and be accorded the status as a separate application by being placed in a new file wrapper and assigned a new application number, with the new application being accorded a filing date as of the date the application filed by reference was filed. An application filed by reference is not improper simply because it is accompanied by a specification and drawings. Thus, an applicant will not be entitled to a refund of the filing fees paid in a proper application filed by reference. If the petition under 37 CFR 1.182 requesting that the modified specification and any drawings be removed from the file of the application filed by reference is granted, new filing fees, including the surcharge required by 37 CFR 1.16(f), would be needed for the new application created as a result of the grant of the petition.

Reference filing is intended for situations when a copy of the previously filed application is not available at the time the current application is being filed. If a copy of the previously filed application is available, applicant should file the copy of the specification and drawings under 35 U.S.C. 111(a) and 37 CFR 1.51(b) and not complete the section of the ADS for filing by reference. As explained above, if the reference filing section of the ADS is completed, applicants will be required to pay the surcharge under 37 CFR 1.16(f), even if a copy of the previously filed application is present on filing the application. A reference filing statement made upon filing cannot be rescinded because the reference to the previously filed application constitutes the specification and any drawings of the instant application. See 35 U.S.C. 111(c).

There is no provision for the filing of a continuation-in-part of a previously filed application under 37 CFR 1.57(a). 35 U.S.C. 111(c) provides that the reference to the previously filed application “shall constitute the specification and any drawings of the subsequent application.” The specification and any drawings of a continuation-in-part would need to extend beyond the specification and any drawings of the previously filed application. Thus, the filing by reference of a continuation-in-part of the previously filed application is not contemplated by 35 U.S.C. 111(c).