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217    Incorporation by Reference Under 37 CFR 1.57(a) [R-11.2013]

35 C.F.R. 1.57  Incorporation by reference.

  • (a) Subject to the conditions and requirements of this paragraph, if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application, or a claim under § 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim under § 1.55 or § 1.78 shall also be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawing(s).
    • (1) The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b), or abandonment of the application, whichever occurs earlier. The applicant is also required to:
      • (i) Supply a copy of the prior-filed application, except where the prior-filed application is an application filed under35 U.S.C. 111;
      • (ii) Supply an English language translation of any prior-filed application that is in a language other than English; and
      • (iii) Identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.
    • (2) Any amendment to an international application pursuant to this paragraph shall be effective only as to the United States, and shall have no effect on the international filing date of the application. In addition, no request to add the inadvertently omitted portion of the specification or drawings in an international application designating the United States will be acted upon by the Office prior to the entry and commencement of the national stage (§ 1.491) or the filing of an application under 35 U.S.C. 111(a) which claims benefit of the international application.
    • (3) If an application is not otherwise entitled to a filing date under § 1.53(b), the amendment must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f).

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I.   IN GENERAL

37 CFR 1.57(a) provides that, if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the 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, or international application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim for priority or benefit shall be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawings.

The purpose of 37 CFR 1.57(a) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is (are) inadvertently omitted from an application, such as through a clerical error. It allows inadvertently omitted material to be added to the application by way of a later-filed amendment if the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application even though there is no explicit incorporation by reference of the prior-filed application. For a discussion of explicit incorporation by reference statements, see MPEP § 608.01(p).

II.   CONDITIONS AND REQUIREMENTS OF 37 CFR 1.57(a)

The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(a):

  • (A) the application must have been filed on or after September 21, 2004;
  • (B) all or a portion of the specification or drawing(s) must have been inadvertently omitted from the application;
  • (C) 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, or international application, must have been present on the filing date of the application;
  • (D) the inadvertently omitted portion of the specification or drawing(s) must be completely contained in the prior-filed application;
  • (E) applicant must file an amendment to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier;
  • (F) if the application is not otherwise entitled to a filing date, applicant must also file a petition under 37 CFR 1.57(a) accompanied by the petition fee set forth in 37 CFR 1.17(f);
  • (G) applicant must supply a copy of the prior-filed application, except where the prior-filed application is an application filed under 35 U.S.C. 111;
  • (H) applicant must supply an English language translation of any prior-filed application that is in a language other than English; and
  • (I) applicant must identify where the inadvertently omitted portion of the specification or drawing(s) can be found in the prior-filed application.

A.   Application Filed On or After September 21, 2004

37 CFR 1.57(a) became effective on September 21, 2004 and applies to applications filed on or after that date. Thus, an application that inadvertently omits material must have been filed on or after September 21, 2004 in order for 37 CFR 1.57(a) to apply. Applicants may, however, rely on prior-filed applications filed before September 21, 2004 to supply inadvertently omitted material to applications filed on or after September 21, 2004.

B.   Material Must Be Inadvertently Omitted

There is no requirement for applicant to submit a declaration stating that the omission was inadvertent or to submit proof that a particular omission was inadvertent at the time of filing of the application. If applicant submits an amendment to add the omitted material pursuant to 37 CFR 1.57(a), it would constitute a certification under 37 CFR 11.18(b) that the omission was inadvertent. The Office, however, may inquire as to inadvertence where the record raises such issue.

C.   Claim Under 37 CFR 1.55 or 1.78 Present on Filing Date

The priority claim under 37 CFR 1.55 or the benefit claim under 37 CFR 1.78 of the prior-filed application must be present on the filing date of the later-filed application in order for it to be considered an incorporation by reference of the prior-filed application under 37 CFR 1.57(a). The later-filed application claiming benefit of the prior-filed application can be a continuation, divisional, or continuation-in-part application of the prior-filed application.

D.   Omitted Material Completely Contained in Prior-filed Application

The phrase “completely contained” in 37 CFR 1.57(a) requires that the material to be added to the later-filed application under 37 CFR 1.57(a) must be expressly, as opposed to implicitly, disclosed in the prior-filed application. Furthermore, the material to be added must be completely contained in the prior-filed application as filed since it is the prior application as filed which is being incorporated under 37 CFR 1.57(a).

E.   Amendment to Add Inadvertently Omitted Material

The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined in 37 CFR 1.114(b), or the abandonment of the application, whichever occurs earlier. If the Office of Patent Application Processing (OPAP) mails a “Notice of Omitted Item(s)” indicating that a portion of the specification or drawings have been omitted, any amendment pursuant to 37 CFR 1.57(a) should be submitted within the two month time period set in the notice and should be identified as an amendment under 37 CFR 1.57(a). The amendment must be in compliance with 37 CFR 1.57(a) and 1.121. See MPEP § 601.01(d) and § 601.01(g). While an amendment to include inadvertently omitted material may be submitted in reply to a final Office action which first raises the issue of the omitted material, such an amendment does not have a right of entry as it would be considered as an amendment under 37 CFR 1.116. If the application is abandoned or the prosecution is closed, applicant may file a petition to revive an application under 37 CFR 1.137 and/or a request for continued examination under 37 CFR 1.114, as appropriate, in order to restore the application to pending status and/or reopen prosecution in the application. If, however, an application has been patented, a certificate of correction or a reissue application could not be used to add inadvertently omitted material to that patent via 37 CFR 1.57(a).

In order for the omitted material to be included in the application, and hence considered to be part of the disclosure, the application must be amended to include the omitted portion. Therefore, applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(a). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.

In addition to filing the amendment to add the inadvertently omitted material, applicant is also required to: (A) supply a copy of the prior-filed application, except where the prior-filed application is an application filed under 35 U.S.C. 111; (B) supply an English-language translation of any prior-filed application that is in a language other than English; and (C) identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.

F.   Petition Requirement

If an application is not otherwise entitled to a filing date under 37 CFR 1.53(b), the amendment must be by way of petition under 37 CFR 1.57(a)(3) accompanied by the fee set forth in 37 CFR 1.17(f). If OPAP mails a “Notice of Incomplete Application” indicating that the application lacks a specification or drawings, applicant should file a petition under 37 CFR 1.57(a) in response to the notice if applicant wants to rely on 37 CFR 1.57(a). See MPEP § 601.01(d) and § 601.01(f).

G.   International Applications

Any amendment to an international application pursuant to 37 CFR 1.57(a) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(a) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11. In addition, no request to add the inadvertently omitted portion of the specification or drawings in an international application designating the United States will be acted upon by the Office prior to the entry and commencement of the national stage (37 CFR 1.491) or the filing of an application under 35 U.S.C. 111(a) which claims benefit of the international application.

III.   EXAMPLES

  • Example 1: The Office of Patent Application Processing (OPAP) noticed that Figure 3 was omitted from the application during the initial review of the application although the specification included a description of Figure 3. The application as originally filed contained a claim under 37 CFR 1.78 for the benefit of a prior-filed application that included the appropriate Figure 3. OPAP mailed a Notice of Omitted Item(s) notifying the applicant of the omission of Figure 3 and providing a two-month period for reply.

    Applicant may rely on the incorporation by reference provided by 37 CFR 1.57(a) to amend the application to add Figure 3. Applicant, however, must file the amendment to add the inadvertently omitted drawing figure in compliance with 37 CFR 1.57(a) within the time period set forth in the Notice of Omitted Item(s).

  • Example 2: Applicant discovered that the last page of the specification is inadvertently omitted after the prosecution of the application has been closed (e.g., a final Office action, an Ex Parte Quayle action, or a notice of allowance has been mailed to the applicant). The application, as originally filed, contained a claim under 37 CFR 1.78 for the benefit of a prior-filed application that included the last page of the specification.

    If applicant wishes to amend the specification to include the inadvertently omitted material, applicant must reopen the prosecution by filing a Request for Continued Examination (RCE) under 37 CFR 1.114 accompanied by the appropriate fee and an amendment in compliance with 37 CFR 1.57(a) within the time period for reply set forth in the last Office action (e.g., prior to payment of the issue fee, unless applicant also files a petition to withdraw the application from issue).

  • Example 3: Applicant filed a (third) application that includes a claim under 37 CFR 1.78 for the benefit of a (second) prior-filed application and a (first) prior-filed application. The second application was a continuation application of the first application and the second application was abandoned after the filing of the third application. Subsequently, the applicant discovered the last page of the specification was inadvertently omitted from the third application and the second application.

    If the benefit of the filing date of first application for the omitted subject matter is required (for example, the omitted material is required to provide support for the claimed subject matter of the third application and there is an intervening reference that has a prior art date prior to the filing date of the third application, but after the filing date of the first application), applicant must amend the specification of the second application and the specification of the third application to include the inadvertently omitted material in compliance with 37 CFR 1.57(a) (note: the second and third applications must be filed on or after the effective date of 37 CFR 1.57(a)). Since the second application is abandoned, applicant must file a petition to revive under 37 CFR 1.137 in the second application only for the purpose of correcting the specification under 37 CFR 1.57(a) along with the amendment in compliance with 37 CFR 1.57(a).

IV.   FORM PARAGRAPHS

Examiners may use form paragraph 6.19.02 set forth below to notify applicant that an amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(a) is not in compliance with 37 CFR 1.57(a). If the amendment is made to the specification and/or drawings and introduces new matter into the disclosure, form paragraph 7.28 must also be used to object to the new matter added to the disclosure, and if the amendment adds new matter to the claims or affects the claims, form paragraph 7.31.01 must also be used to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.

¶ 6.19.02    Amendment Not in Compliance with 37 CFR 1.57(a)

The amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(a) filed [1] is not in compliance with 37 CFR 1.57(a) because [2].

Examiner Note:

  • 1. In bracket 1, insert the date the amendment was filed.
  • 2. In bracket 2, insert the reason why the amendment has not been entered. For example: (1) the present application was filed before September 21, 2004, the effective date of 37 CFR 1.57(a); (2) the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application; (3) the inadvertently omitted portion is not completely contained in the prior-filed application; (4) a copy of the prior-filed application (except where the prior-filed application is an application filed under 35 U.S.C. 111) was not submitted; (5) an English language translation of the prior-filed non-English language application was not submitted; or (6) applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.
  • 3. This form paragraph must be followed by form paragraph 7.28, where the amendment is made to the specification and/or drawings and introduces new matter into the disclosure, and/or form paragraph 7.31.01, where the amendment adds new matter to the claims or affects the claims.
  • 4. If the amendment is an after-final amendment, an advisory action should be issued indicating that the amendment raises new issues because it is not in compliance with 37 CFR 1.57(a).
  • 5. This form paragraph should not be used if there is an express incorporation by reference since applicant would not need to comply with the requirements of 37 CFR 1.57(a).

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Last Modified: 03/27/2014 10:10:34