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1121    Content of a Patent Application Publication [R-11.2013]

37 C.F.R. 1.215  Patent Application Publication

  • (a) The publication of an application under 35 U.S.C. 122(b) shall include a patent application publication. The date of publication shall be indicated on the patent application publication. The patent application publication will be based upon the specification and drawings deposited on the filing date of the application, as well as the application data sheet and/or the inventor's oath or declaration. The patent application publication may also be based upon amendments to the specification (other than the abstract or the claims) that are reflected in a substitute specification under § 1.125(b), amendments to the abstract under § 1.121(b), amendments to the claims that are reflected in a complete claim listing under § 1.121(c), and amendments to the drawings under § 1.121(d), provided that such substitute specification or amendment is submitted in sufficient time to be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun. Technical preparations for publication of an application generally begin four months prior to the projected date of publication. The patent application publication of an application that has entered the national stage under 35 U.S.C. 371 may also include amendments made during the international stage. See paragraph (c) of this section for publication of an application based upon a copy of the application submitted via the Office electronic filing system.
  • (b) The patent application publication will include the name of the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter if that information is provided in the application data sheet in an application filed under § 1.46. Assignee information may be included on the patent application publication in other applications if the assignee information is provided in an application data sheet submitted in sufficient time to be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun. Providing assignee information in the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
  • (c) At applicant's option, the patent application publication will be based upon the copy of the application (specification, drawings, and the application data sheet and/or the inventor's oath or declaration) as amended, provided that applicant supplies such a copy in compliance with the Office electronic filing system requirements within one month of the mailing date of the first Office communication that includes a confirmation number for the application, or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later.
  • (d) If the copy of the application submitted pursuant to paragraph (c) of this section does not comply with the Office electronic filing system requirements, the Office will publish the application as provided in paragraph (a) of this section. If, however, the Office has not started the publication process, the Office may use an untimely filed copy of the application supplied by the applicant under paragraph (c) of this section in creating the patent application publication.

Pre-AIA 37 C.F.R. 1.215   Patent application publication

  • (a) The publication of an application under 35 U.S.C. 122(b) shall include a patent application publication. The date of publication shall be indicated on the patent application publication. The patent application publication will be based upon the specification and drawings deposited on the filing date of the application, as well as the executed oath or declaration submitted to complete the application. The patent application publication may also be based upon amendments to the specification (other than the abstract or the claims) that are reflected in a substitute specification under 37 CFR 1.125(b), amendments to the abstract under 37 CFR 1.121(b), amendments to the claims that are reflected in a complete claim listing under § 1.121(c), and amendments to the drawings under 37 CFR 1.121(d), provided that such substitute specification or amendment is submitted in sufficient time to be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun. Technical preparations for publication of an application generally begin four months prior to the projected date of publication. The patent application publication of an application that has entered the national stage under 35 U.S.C. 371 may also include amendments made during the international stage. See paragraph (c) of this section for publication of an application based upon a copy of the application submitted via the Office electronic filing system.
  • (b) If applicant wants the patent application publication to include assignee information, the applicant must include the assignee information on the application transmittal sheet or the application data sheet (§ 1.76). Assignee information may not be included on the patent application publication unless this information is provided on the application transmittal sheet or application data sheet included with the application on filing. Providing this information on the application transmittal sheet or the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
  • (c) At applicant’s option, the patent application publication will be based upon the copy of the application (specification, drawings, and oath or declaration) as amended, provided that applicant supplies such a copy in compliance with the Office electronic filing system requirements within one month of the mailing date of the first Office communication that includes a confirmation number for the application, or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later.
  • (d) If the copy of the application submitted pursuant to paragraph (c) of this section does not comply with the Office electronic filing system requirements, the Office will publish the application as provided in paragraph (a) of this section. If, however, the Office has not started the publication process, the Office may use an untimely filed copy of the application supplied by the applicant under paragraph (c) of this section in creating the patent application publication.

A patent application publication includes a front page containing information similar to that contained on the front page of a patent, the drawings (if any), and the specification (including claims). The patent application publication will generally be based upon the following:

  • (A) The patent application papers and drawings deposited on the filing date of the application;
  • (B) The executed oath or declaration submitted to complete the application and/or application data sheet for applications filed on or after September 16, 2012; and
  • (C) Any subsequently filed application papers and drawings submitted in reply to a preexamination notice requiring a title and abstract in compliance with 37 CFR 1.72, application papers in compliance with 37 CFR 1.52, drawings in compliance with 37 CFR 1.84, or a sequence listing in compliance with 37 CFR 1.821 through 1.825; and

I.   AMENDMENTS

The patent application publication may also be based upon amendments that expedite the publication process, provided that such amendments are submitted in sufficient time to be entered into the application file before technical preparations for publication of the application have begun (generally four months prior to the projected publication date). While the Office will attempt to use the amendments submitted by applicants, applicants are not entitled to have the amendments used in the publication. For example, the patent application publication may also be based upon the following amendments because they are in formats useable for publication:

  • (A) Amendments to the specification that are reflected in a substitute specification under 37 CFR 1.125(b);
  • (B) An amendment to the abstract under 37 CFR 1.121(b);
  • (C) Amendments to the claims that are reflected in a complete claim listing under 37 CFR 1.121(c); and
  • (D) Amendments to drawings under 37 CFR 1.121(d).

The patent application publication of an application that has entered the national stage under 35 U.S.C. 371 may also include amendments made during the international stage, such as: amendments under Article 34 and 19; rectifications; corrections of physical defects under PCT Rule 26; and an abstract rewritten by the International Searching Authority.

If an applicant wants the publication to include drawings other than those submitted with the application as filed (e.g., better quality or amended drawings), applicant may file the replacement drawings in sufficient time to be entered into the application file before four months prior to the projected publication date. The Office cannot guarantee that the latest amendment or any particular amendment will be included in the patent application publication. If applicant wishes to have the patent application publication be based upon a copy of the application (specification, drawings and oath or declaration) as amended, applicant must supply such a copy via the electronic filing system (EFS), e.g., set forth in the EFS-Web Legal Framework within one month of the mailing date of the first Office correspondence (e.g., filing receipt) including a confirmation number for the application or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later (see 37 CFR 1.215(c) and Assignment of Confirmation Number and Time Period for Filing a Copy of an Application by EFS for Eighteen-Month Publication Purposes, 1241 Off. Gaz. Pat. Office 97 (December 12, 2000)). See also III. AMENDED APPLICATION FILED VIA EFS, below. The Office will use the electronic copy provided by the applicant to create the publication. A proper continued prosecution application (CPA) filed on or after November 29, 2000 (but before July 14, 2003) will be published based upon the application papers deposited on the filing date of the first prior application.

Applicants may review the bibliographic information contained in the Office’s database, and application papers that have been scanned into the Image File Wrapper system, via the Office’s Patent Application Information Retrieval (PAIR) system. Applicants should bring any errors to the Office’s attention before technical preparations for publication of the application have begun (generally four months prior to the projected publication date).

Long nucleotide and/or amino acid sequences or large numbers of such sequences are very difficult for the Office to publish as part of patent application publications. Therefore, long sequence listings will only be published in electronic form on the USPTO sequence homepage (http://seqdata.uspto.gov) as an ASCII text file. The patent application publication will include a statement that the application contains a lengthy sequence listing section and a hyperlink to the web page containing the sequence listing. See Notice of Change in Publishing of Patents and Patent Application Publications With Sequence Listings, 1250 Off. Gaz. Pat. Office 70 (September 11, 2001).

  Avoid Filing Preliminary Amendments

Applicants should not file any preliminary amendment with the application. Submitting applications without any accompanying preliminary amendment reduces the processing required of the Office, and will help to ensure that patent application publications are printed correctly.

A preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application under 37 CFR 1.115(a)(1). The Office will include such a preliminary amendment that is present on the filing date of the application in the patent application publication. If the preliminary amendment that is present on the filing date of the application is not in a format that is useable for publication, the Office will issue a notice requiring the applicant to submit the amendment in a format useable for publication. Generally, a substitute specification (excluding claims) is required for any preliminary amendments to the specification (other than the claims) that are present on the filing date of the application. Even though a substitute specification is a useable format for publication, applicant should not file a substitute specification with the application because the application size fee will be calculated based on the application papers including the clean version and marked-up version of the substitute specification.

To avoid submitting preliminary amendments, applicants should incorporate any desired amendments into the text of the specification including a new set of claims, even where the application is a continuation or divisional application of a previously-filed patent application. In such a continuation or divisional application, a new specification (e.g., reflecting amendments made in the parent application) may be submitted together with a copy of the oath or declaration from the previously filed application so long as no new matter is included in the specification. See 37 CFR 1.63(d)(1)(iii). The specific reference to the prior application required by 35 U.S.C. 119(e) or 120 and 37 CFR 1.78(a) in applications filed before September 16, 2012 can be submitted in an application data sheet (ADS) rather than in a preliminary amendment to the first sentence(s) of the specification. Such references in applications filed on or after September 16, 2012 may only be made in an ADS. If the specific reference is submitted in a preliminary amendment, however, a substitute specification will not be required if the preliminary amendment only adds or amends a benefit claim.

Additionally, applications with poor quality text, which may be acceptable for scanning and examination purposes, may lead to errors in the patent application publication. Correction of these errors and inclusion of any desired amendments into the text of the originally-filed specification and drawings will only occur if applicant files a request for republication under 37 CFR 1.221(a). They will not be corrected by the Office in a corrected publication under 37 CFR 1.221(b). See MPEP § 1130.

II.   APPENDICES

Appendices, other than those containing sequence listings or certain tables, are not printed if they are contained on pages located after the claims. If the application includes multiple claim sets in the specification, the Office may treat pages located after the first set of claims as appendices. Note that computer program listings may be printed if they are included in the specification before the claims, but that computer program listings that are provided on compact disc in accordance with 37 CFR 1.96(c) and 37 CFR 1.52(e) are not printed as part of the patent or patent application publication.

III.   AMENDED APPLICATION FILED VIA EFS

At applicant’s option, a patent application publication may be based upon a copy of the application (specification, drawings and oath or declaration) as amended, provided that applicant supplies such a copy in compliance with the Office electronic filing system (EFS) requirements, e.g. set forth in the EFS-Web Legal Framework within one month of the mailing date of the first Office communication that includes a confirmation number for the application, or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later. 37 CFR 1.215(c). If the copy of the application submitted under 37 CFR 1.215(c) does not comply with the Office EFS requirements, the Office will publish the application as provided in 37 CFR 1.215(a) . If the copy of the application submitted under 37 CFR 1.215(c) was untimely, the Office may use the untimely filed copy of the application supplied by the applicant under 37 CFR 1.215(c) in creating the patent application publication so long as the copy was received before the Office has started the publication process. For further information about EFS, see the Electronic Business Center on the USPTO web site (www.uspto.gov).

IV.   APPLICANT INFORMATION

If a patent application is filed pursuant to 37 CFR 1.46, the patent application publication will include the name of the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter. The information must be provided on the application data sheet (ADS) filed with the application. If the applicant information is corrected or updated in accordance with 37 CFR 1.46(c) after filing the application, the corrected or updated information may be used, if the information is recognized by the Office of Data Management – Patent Publication Branch before the technical preparation for the publication has begun.

Errors in applicant information printed on the publication are not considered material mistakes by the Office under 37 CFR 1.211(b) (e.g., errors in the assignee’s name). See MPEP § 1130. Thus, these errors may only be corrected if applicant files a request for republication under 37 CFR 1.211(a).

V.   ASSIGNEE INFORMATION

For applications filed on or after September 16, 2012, if the applicant would like the assignee data to be published, the assignee data must be submitted on the application data sheet (ADS). For applications filed before September 16, 2012, if the applicant would like the assignee data to be published, the information must be provided on the application transmittal letter or the application data sheet (ADS) filed with the application. Providing this information on the application transmittal letter or the application data sheet does not substitute for compliance with any requirement of 37 CFR Part 3 to have an assignment recorded by the Office. If the assignee data is recorded with the Assignment Division only, the information will not be published as part of the patent application publication.

Errors in assignee information printed on the publication are not considered material mistakes by the Office under 37 CFR 1.221(b) (e.g., errors in the assignee’s name). See MPEP § 1130. Thus, these assignment errors and applicant’s failure to include assignment data may only be corrected if applicant files a request for republication under 37 CFR 1.221(a).

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Last Modified: 03/27/2014 10:10:32