702 Requisites of the Application [R-07.2015]
The Office of Patent Application Processing (OPAP) reviews application papers to determine whether a new application is entitled to a filing date. Note that as a result of the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, December 18, 2012, and specifically, the amendments to the patent laws to implement the provisions of the Patent Law Treaty (PLT) in title II of the PLTIA, the filing date requirements for applications filed on or after December 18, 2013 are different from the filing date requirements for applications filed prior to December 18, 2013. Except for design applications, the filing date for nonprovisional applications filed on or after December 18, 2013 is the date on which a specification, with or without claims, is received in the Office. See MPEP § 601.01(a) for additional information. Similarly, provisional applications filed on or after December 18, 2013 may receive a filing date even if the application is filed without drawings. See MPEP § 601.01(b) for additional information. 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. See MPEP § 601.01(a). Also, for applications filed on or after December 18, 2013, an application (other than an application for a design patent) is not required to include any drawings to be entitled to a filing date. It should be noted, however, 35 U.S.C. 111(a)(2) continues to require the application to include a drawing as prescribed by 35 U.S.C. 113, which requires a drawing where necessary for the understanding of the subject matter sought to be patented. Therefore, any drawings necessary for the understanding of the invention should be submitted with the application on filing.
If the subject matter of the application admits of illustration by a drawing to facilitate understanding of the invention, including where a drawing is necessary for the understanding of the invention, the Office will continue the practice of requiring a drawing. See MPEP § 608.02, subsection IV. As discussed in MPEP § 608.02, this requirement prior to examination should continue to be extremely rare and limited to the situation in which no examination can be performed due to the lack of an illustration of the invention.
In addition, 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. See MPEP § 601.01(a), subsection III.
The minimal formal requirements resulting from the implementation of the PLTIA and PLT 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. Similarly, while the absence of any drawing on the filing of an application no longer raises a question as to whether the application is entitled to a filing date, the preparation of drawings for a provisional or nonprovisional application is prudent where a drawing is necessary for the understanding of the subject matter sought to be patented, and inclusion of such drawing(s) with the application on filing will help ensure that the requirements of 35 U.S.C. 113 are satisfied for any such claimed invention.
If an application (other than an application for a design patent) is filed on or after December 18, 2013, without any claims, OPAP will issue a notice giving the applicant a time period within which to submit at least one claim in order to avoid abandonment. An application will not be placed on an examiner’s docket unless and until the application includes a specification including at least one claim.
For applications filed under pre-PLT (AIA) 35 U.S.C. 111 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).
Once OPAP determines that the application is entitled to a filing date, OPAP then determines whether the application as filed is complete, e.g., includes the required fees, the inventor’s oath or declaration, and all pages of the specification and drawings. If the papers filed are not entitled to a filing date, OPAP will send a “Notice of Incomplete Application” informing applicant of the deficiencies; if the application is entitled to a filing date but it is not complete, 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 and indicating what papers must be filed to complete the application.
The examiner should be careful to see that the application is complete when taken up for examination. If, for example, pages of the specification or drawings are missing, the examiner should determine whether the application is entitled to the filing date assigned, and what action should be taken. See MPEP §§ 601.01(d) and 601.01(g) for guidance.