601.01(g) Applications Filed Without All Figures of Drawings [R-07.2022]

Created On
byChhabra Law Firm

I. REVIEW BY THE OFFICE OF PATENT APPLICATION PROCESSING

The Office of Patent Application Processing (OPAP) reviews application papers to determine whether all of the figures of the drawings that are mentioned in the specification are present in the application. If an application filed under 35 U.S.C. 111 prior to December 18, 2013, or a design application, is filed without all of the drawing figure(s) referred to in the specification, and the application contains something that can be construed as a written description, at least one drawing, if necessary under 35 U.S.C. 113 (first sentence), and, in a nonprovisional application, at least one claim, an OPAP notice (e.g., a “Notice of Omitted Item(s)”) will be sent indicating that the application papers so deposited have been accorded a filing date, but are lacking some of the figures of drawings described in the specification. For an application, which is not a design application, filed under 37 CFR 1.53(b) or (c) on or after December 18, 2013, if the application is filed without all of the drawings, but contains something that can be construed as a specification, with or without claims, an OPAP notice (e.g., a “Notice of Omitted Items”) will be sent indicating that the application papers so deposited have been accorded a filing date, but are lacking some drawings.

The procedure for handling nonprovisional applications having omitted items was revised in “Change in Procedure for Handling Nonprovisional Applications Having Omitted Items,” 1315 OG 103 (February 20, 2007).

Under the revised procedure, the mailing of an OPAP notice regarding a missing drawing figure(s) in a nonprovisional application will permit the applicant to:

  • (A) promptly establish prior receipt in the USPTO of the drawing(s) at issue. An applicant asserting that the drawing(s) was in fact received by the USPTO with the application papers must, within two months from the date of the OPAP notice, file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR1.17(f), along with evidence of such deposit. The petition fee will be refunded if it is determined that the drawing(s) was in fact received by the USPTO with the application papers deposited on filing. The two-month period is extendable under 37 CFR 1.136;
  • (B) promptly submit the omitted drawing(s) in a nonprovisional application and accept the date of such submission as the application filing date. An applicant desiring to submit the omitted drawing(s) in a nonprovisional application and accept the date of such submission as the application filing date must, within two months from the date of the OPAP notice, file any omitted drawing(s) and a petition under 37 CFR 1.182 with the petition fee set forth in 37 CFR 1.17(f), requesting the later filing date. For applications filed before September 16, 2012, the omitted drawings must be filed with an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and pre-AIA 37 CFR 1.64 referring to such drawing(s). The two-month period is extendable under 37 CFR 1.136; or
  • (C) accept the application as deposited in the USPTO by filing an appropriate amendment. Applicant may accept the application as deposited in the USPTO by either:
    • (1) filing an amendment including replacement drawing sheets in compliance with 37 CFR 1.121(d) to renumber the drawing figures consecutively (if necessary), and a substitute specification (excluding claims) that amends the specification to cancel any references to any omitted drawing(s) and corrects the references in the specification to the drawing figures to correspond with any relabeled drawing figures, in compliance with 37 CFR 1.121(b)(3) and 1.125, without adding the subject matter that was in the omitted drawing(s) and without adding any new matter (see 35 U.S.C. 132(a)). The application will maintain the filing date as of the date of deposit of the original application papers in the USPTO. The original application papers (i.e., the original disclosure of the invention) will include only those application papers present in the USPTO on the original date of deposit. Amendment of the specification is required in a nonprovisional application to cancel all references to the omitted drawing, both in the brief and detailed descriptions of the drawings and including any reference numerals shown only in the omitted drawings. In addition, an amendment with replacement sheets of drawings in compliance with 37 CFR 1.121(d) is required in a nonprovisional application to renumber the drawing figures consecutively, if necessary, and amendment of the specification is required to correct the references to the drawing figures to correspond with any relabeled drawing figures, both in the brief and detailed descriptions of the drawings, or
    • (2) filing an amendment to add the missing figure(s) by relying on an incorporation by reference under 37 CFR 1.57(b) or other portions of the original disclosure, without adding any new matter (see 35 U.S.C. 132(a)). Applicant is required to submit new and replacement drawing sheets in compliance with 37 CFR 1.121(d) to add the missing figure(s). If an application was filed on or after September 21, 2004, and contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional, international application, or international design application, that was present on the filing date of the application, and the omitted portion of the drawings was inadvertently omitted from the application and is completely contained in the prior-filed application, applicant may submit an amendment to include the inadvertently omitted portion of the drawings pursuant to 37 CFR 1.57(b). The amendment should be identified as an amendment pursuant to 37 CFR 1.57(b) and must comply with the requirements of 37 CFR 1.57(b) and 37 CFR 1.121. See MPEP § 217. The application will maintain the filing date as of the date of deposit of the original application papers in the USPTO. The original application papers (i.e., the original disclosure of the invention) will include only those application papers present in the USPTO on the original date of deposit.

The submission of omitted drawing(s) in a nonprovisional application and acceptance of the date of such submission as the application filing date is tantamount to simply filing a new application. Thus, applicants should consider filing a new application as an alternative to submitting a petition under 37 CFR 1.182 (with the petition fee under 37 CFR 1.17(f)) with any omitted drawing(s), which is a cost effective alternative in instances in which a nonprovisional application is deposited without filing fees. 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 drawing(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. The mailing of an OPAP notice regarding missing drawing figure(s) in a provisional application will permit the applicant to either: (1) promptly establish prior receipt of the drawing(s) at issue by filing a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), along with evidence of such deposit; or (2) accept the application as deposited by failing to file a petition within a two-month non-extendable time period.

Applications in which an OPAP notice regarding omitted items has been mailed will be retained in OPAP to await a reply to the notice. Failure to timely reply to the OPAP notice in a nonprovisional application will result in abandonment of the application. Nonprovisional applications that are timely completed will then be forwarded to the appropriate Technology Center for examination of the application. For provisional applications in which applicant accepts the application as deposited by failing to timely file a petition in response to an OPAP notice regarding omitted items, if the provisional application is complete under 37 CFR 1.51(c), it will be held in the Office’s Image File Wrapper (IFW) system and automatically abandoned at the end of its pendency period. See MPEP § 601.01(a) for treatment of nonprovisional applications that are not complete under 37 CFR 1.51(b) and MPEP § 601.01(b) for treatment of provisional applications that are not complete under 37 CFR 1.51(c).

The treatment of an application subsequent to the mailing of a “Notice of Omitted Item(s)” is discussed in MPEP § 601.01(d).

Applications are often filed with drawings with several views of the invention where the views are labeled using a number-letter combination, e.g., Fig. 1A, Fig. 1B, and Fig. 1C. If a figure which is referred to in the specification by a particular number cannot be located among the drawings, and the drawings include at least one figure labeled with that particular number in combination with a letter, correction will be required. For example, if the drawings show Figures 1A, 1B, and 1C and the brief description of the drawings refers only to Figure 1, this is an error in the specification which must be corrected.

II. REVIEW BY EXAMINER

If it is discovered that an application that was forwarded for examination was filed without all of the drawing figure(s) referred to in the specification, and a Notice of Omitted Items or other OPAP notice regarding omitted items has not been mailed by OPAP, the examiner should review the application to determine whether the application is entitled to a filing date if the application was filed under 35 U.S.C. 111(a) prior to December 18, 2013 or is a design application. An application filed under 35 U.S.C. 111(a) prior to December 18, 2013 or a design application is entitled to a filing date if the application contains something that can be construed as a written description, at least one drawing figure (if necessary under 35 U.S.C. 113, first sentence), and at least one claim. If the application is not a design application and was filed under 35 U.S.C. 111(a) on or after December 18, 2013, the application is entitled to a filing date if it is filed with a specification, with or without drawings.

A.Application Entitled to a Filing Date

If the application is entitled to a filing date, the examiner should notify applicant of the omission in the next Office action and require applicant to do one of the following:

  • (A) accept the application, as filed, without all of the drawing figure(s) referred to in the specification;
  • (B) file any omitted drawing figure(s) and a petition under 37 CFR 1.182 with the petition fee set forth in 37 CFR 1.17(f), requesting the date of submission of the omitted drawing figure(s) as the application filing date. For applications filed before September 16, 2012, the omitted drawing(s) must be filed with an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and pre-AIA 37 CFR 1.64 referring to the omitted drawing figure(s); or
  • (C) file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f) alleging that the drawing figure(s) indicated as omitted was in fact deposited with the USPTO with the application papers, including any and all evidence supporting the allegation. See MPEP § 503. The petition fee will be refunded if it is determined that the drawing figure(s) was in fact received by the USPTO with the application papers deposited on filing.

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.

If an application contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional, international application, or international design application, that was present on the filing date of the application, and the omitted portion of the drawing(s) was inadvertently omitted from the application and is completely contained in the prior-filed application, applicant may submit an amendment to include the inadvertently omitted portion of the drawing(s) pursuant to 37 CFR 1.57(b). The amendment should be submitted in response to the Office action and must comply with 37 CFR 1.57(b) and 37 CFR 1.121. See MPEP § 217.

Any petition filed in accordance with item (B) or (C) above will be forwarded to the Office of Petitions.

B.Application NOT Entitled to a Filing Date

If upon review of the application, the examiner determines that the application filed under 35 U.S.C. 111(a) prior to December 18, 2013 or a design application is NOT entitled to a filing date because the application does not contain any drawing figure, and at least one drawing figure is necessary under 35 U.S.C 113, first sentence, the examiner should forward the application to OPAP for mailing of a “Notice of Incomplete Application.”