[Federal Register Volume 60, Number 218 (Monday, November 13, 1995)]
[Notices]
[Pages 56982-56984]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-27874]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket #: 951019254-5254-01]
RIN 0651-XX05
Proposed Changes in Procedures Relating to an Application Filing
Date
AGENCY: Patent and Trademark Office, Commerce.
[[Page 56983]]
ACTION: Notice; Request for comments.
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SUMMARY: The Patent and Trademark Office (PTO) requests written public
comment on a proposed change in procedures relating to the treatment of
prima facie incomplete applications. Currently, applications filed
without all the pages of the specification or without all of the
figures of the drawings are treated as prima facie incomplete and not
accorded a filing date. The PTO is considering changing this procedure
to accord a filing date to any application that contains something that
can be construed as a written description, any necessary drawing, and a
claim.
DATES: Written comments will be accepted by the PTO until January 12,
1996.
ADDRESSES: Written comments should be addressed to Box DAC, Assistant
Commissioner for Patents, Washington, D.C. 20231. Comments may also be
sent by facsimile transmission to (703) 308-6916, with a confirmation
copy mailed to the above address, or by electronic mail over the
Internet to [email protected].
FOR FURTHER INFORMATION CONTACT: Robert W. Bahr by telephone at (703)
305-9285, by facsimile at (703) 308-6916, or Jeffrey V. Nase by
telephone at (703) 305-9285, or by mail addressed as indicated above.
SUPPLEMENTARY INFORMATION: The PTO is considering changes in procedures
relating to the treatment of prima facie incomplete applications.
Currently, applications filed without all the pages of the
specification (Section 608.01 of the Manual of Patent Examining
procedure (MPEP)) (e.g., with page numbering revealing that page(s) are
missing), or without all of the figures of the drawings (MPEP 608.02)
(e.g., without drawing figures that are mentioned in the
specification), are treated as prima facie incomplete and not accorded
a filing date. The Initial Application Examination Division (formerly
the Application Processing Division) in the Office of Initial Patent
Examination (formerly the Office of National Application Review) mails
a Notice of Incomplete Application indicating that a filing date has
not been assigned to the application, and indicating that: (1) The
filing date will be the date of receipt of the missing items, and (2)
any assertion that the missing item was submitted, or not necessary for
a filing date, must be by way of petition (with the $130 fee). MPEP
506.02. To obtain the date of deposit of the application as the filing
date, the applicant must: (1) Establish receipt in the PTO of the
allegedly missing item (generally by way of postcard receipt in
accordance with MPEP 503), in which case the petition fee is refunded,
or (2) petition to have the application accepted as deposited, in which
case the petition fee is not refunded.
A petition to have the application accepted as deposited requires:
(a) An amendment deleting all references to the missing item and
correcting the sequential numbering of the pages or drawings in the
application, (b) a request to cancel the missing item, if such missing
item has been submitted after the date of deposit, and (c) a
supplemental oath or declaration by the applicant stating that the
invention is adequately disclosed in, and a wish to rely on, the
application as thus amended without the missing item and the references
thereto in the specification, for purposes of an original disclosure
and filing date. The supplemental oath or declaration by the applicant
is a statement in writing evidencing that the applicant has been
informed of the content of his or her application as filed on the
original date of deposit and that the actual content has been reviewed
and understood.
As a significant number of applicants are willing to accept the
application without the ``missing part,'' the procedure of requiring
the applicant to file a petition to obtain the date of deposit as the
filing date results in numerous filing date petitions. The preparation
by applicants and the consideration by the PTO of some 3000 such
petitions a year is time consuming and burdensome. In addition, in most
instances there is no controversy as to the content of the prima facie
incomplete application (i.e., a grantable petition requires only the
above-mentioned corrective amendment(s) and supplemental oath or
declaration). Finally, the $130 petition fee does not cover the
administrative cost of treating such prima facie incomplete
applications and petitions.
Accordingly, the PTO is considering changing the procedure for the
treatment of applications filed without all the pages of the
specification or without all of the figures of the drawings. These
changes in practice would not require any amendment to the rules of
practice.
The Initial Application Examination Division will continue to
review application papers for completeness in the manner that such
papers are currently reviewed.
Applications Filed Without All Drawings or Pages of Specification
There is no requirement in the statutes or regulations that an
application include sequentially numbered pages, or all of the pages,
or all of the drawings referred to in the specification to obtain a
filing date. That is, while 37 CFR 1.52(b) provides that the pages of
the application should be numbered consecutively, the regulations do
not provide that compliance with 37 CFR 1.52 is necessary to obtain a
filing date. Therefore, applications which contain something that can
be construed as a written description, where drawing figure(s) are
referred to in the written description, at least one drawing figure,
and at least one claim, but are filed with page numbering revealing
that page(s) are missing or without all of the drawing figures which
are mentioned in the specification will be treated by mailing a notice
that indicates that the application papers so deposited have been
accorded a filing date, but are lacking some of the pages of
specification or drawings described in the specification. The mailing
of such a notice will permit applicants to either: (1) Promptly
establish prior receipt in the PTO of the item(s), or (2) promptly
submit the omitted item(s) and request a later filing date.
The notice will also indicate that:
(a) An applicant asserting that the mentioned item was in fact
deposited in the PTO with the application papers must file a petition
(and $130 petition fee, which will be refunded if it is determined that
the item was in fact received by the PTO) with evidence of such deposit
within two months of the date of the notice (37 CFR 1.181(f)),
(b) An applicant desiring to ``complete'' the application and
accept the date of completion as the filing date must file any missing
items (with a supplemental declaration referring to such items) and a
petition under 37 CFR 1.182 (with the $130 petition fee) requesting the
later filing date within two months of the date of the notice (37 CFR
1.181(f)), and
(c) An applicant willing to accept the application as deposited in
the PTO need not respond to the notice, and the failure to file a
petition (and $130 petition fee) under options (a) or (b) above within
two months of the date of the notice (37 CFR 1.181(f)) will be treated
as a constructive acceptance by the applicant of the application as
deposited in the PTO.
The application will be retained in the Initial Application
Examination Division for a period of two months from the mailing date
of such a notice
[[Page 56984]]
to permit the applicant to either establish prior receipt in the PTO of
the item(s), or submit the omitted item(s) and request a later filing
date within this two-month time period. As an applicant may, but is not
required to, respond to such a notice, extensions of time under 37 CFR
1.136 will not be applicable to this two-month time period. At the
expiration of this two-month non-extendable time period the application
will be forwarded to the appropriate examining group for examination of
the application. The application will be accorded a filing date as of
the date of deposit of the application papers in the PTO. The original
application papers (i.e., the original disclosure of the invention)
will include only those application papers present in the PTO on the
date of deposit.
Due to the effect that a loss of filing date can have on an
application, currently the PTO generally treats untimely filing date
petitions on their merits since the application, as incomplete, will
have undergone no further processing or examination. In the procedure
set forth in this notice, however, the PTO will strictly adhere to the
two-month period set forth in 37 CFR 1.181(f), and dismiss as untimely
any petition not filed within this two-month period. This strict
adherence to the two-month period set forth in 37 CFR 1.181(f) is
necessary since: (1) Such applications will now be forwarded for
examination at the end of this two-month period, (2) according the
application a filing date later than the date of deposit may affect the
date of expiration of any patent issuing on the application under
Public Law 103-465, and (3) the filing of a continuation-in-part
application is a sufficiently equivalent mechanism for adding
additional subject matter to avoid the loss of patent rights.
Applications Filed Without at Least One Claim
35 U.S.C. 111(a)(2) provides, in part, that an ``application shall
include (A) a specification as prescribed by section 112 of this title;
(B) a drawing as prescribed by section 113 of this title; and (C) an
oath by the applicant as prescribed by section 115 of this title,'' and
35 U.S.C. 111(a)(4) provides that the ``filing date of an application
shall be the date on which the specification and any required drawing
are received in the Patent and Trademark Office.'' 35 U.S.C. 112,
second paragraph, provides that ``[t]he specification shall conclude
with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his
invention.'' Therefore, 35 U.S.C. 111 and 112, second paragraph,
provide that the filing date of an application is that date on which a
specification including at least one claim(s) is filed in the PTO. In
re Mattson, 208 USPQ 168 (Comm'r Pat 1980). Since a claim is a
statutory requirement for a filing date, applications filed without a
claim will not be accorded a filing date. In situations in which an
application is filed without a claim, the Initial Application
Examination Division will continue to mail a notice of Incomplete
Application, and the treatment of such applications will remain
unchanged.
Applications Filed Without Any Drawings
35 U.S.C. 111(a)(2) provides, in part, that an ``application shall
include * * * a drawing as prescribed by section 113 of this title''
and 35 U.S.C. 111(a)(4) provides, in part, that the ``filing date of an
application shall be the date on which the specification and any
required drawing are received in the Patent and Trademark Office.'' 35
U.S.C. 113 in turn provides that an ``applicant shall furnish a drawing
where necessary for the understanding of the subject matter sought to
be patented.'' Drawings are usually not necessary for an understanding
of the subject matter in process and composition applications (i.e.,
applications having claims directed to a process or composition (MPEP
608.02)). As such, applications having at least one process or
composition claim and describing drawing figures in the specification,
but filed without drawings, will be treated as an application filed
without all of the drawings referred to in the specification as
discussed above and processed for examination. Applications having at
least one process or composition claim which do not describe drawing
figures in the specification will simply be processed for examination.
In a situation in which the appropriate examining group determines that
drawings are necessary under 35 U.S.C. 113, the filing date issue will
then be reconsidered on reference from the examining group.
In design applications, the Initial Application Examination
Division will continue to mail a notice of Incomplete Application
indicating that the application lacks the drawings required under 35
U.S.C. 113, and the applicant may: (a) File a petition (and $130 fee)
asserting that the missing item was submitted, or not necessary for a
filing date, or (b) ``complete'' the application and accept the date of
completion as the filing date.
Dated: November 3, 1995.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 95-27874 Filed 11-9-95; 8:45 am]
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