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.
702.01 Obviously Informal Cases [R-07.2015]
When an application is taken up for examination and it is then discovered to be impractical to give a complete action on the merits because of an informal or insufficient disclosure, the following procedure may be followed:
- (A) A reasonable search should be made of the invention so far as it can be understood from the disclosure, objects of invention and claims and any apparently pertinent art cited. In the rare case in which the disclosure is so incomprehensible as to preclude a reasonable search, the Office action should clearly inform applicant that no search was made;
- (B) Any form that lists informalities and any additional formal requirements to be made should be included in the first Office action (see MPEP § 707.07(a));
- (C) A requirement should be made that the specification be revised to conform to idiomatic English and United States patent practice;
- (D) The claims should be rejected as failing to define the invention in the manner required by 35 U.S.C. 112 if they are informal. A blanket rejection is usually sufficient.
The examiner should attempt to point out the points of informality in the specification and claims. The burden is on the applicant to revise the application to render it in proper form for a complete examination.
If a number of obviously informal claims are filed in an application, such claims should be treated as being a single claim for fee and examination purposes.
It is to applicant’s advantage to file the application with an adequate disclosure and with claims which conform to the U.S. Patent and Trademark Office usages and requirements. This should be done whenever possible. If, however, due to the pressure of a Convention deadline or other reasons, this is not possible, applicants are urged to submit promptly, preferably within 3 months after filing, a preliminary amendment which corrects the obvious informalities. The informalities should be corrected to the extent that the disclosure is readily understood and the claims to be initially examined are in proper form, particularly as to dependency, and otherwise clearly define the invention. “New matter” must be excluded from these amendments since preliminary amendments filed after the filing date of the application do not enjoy original disclosure status. See MPEP § 608.04(b).
Whenever, upon examination, it is found that the terms or phrases or modes of characterization used to describe the invention are not sufficiently consonant with the art to which the invention pertains, or with which it is most nearly connected, to enable the examiner to make the examination specified in 37 CFR 1.104, the examiner should make a reasonable search of the invention so far as it can be understood from the disclosure. The action of the examiner may be limited to a citation of what appears to be the most pertinent prior art found and a request that applicant correlate the terminology of the specification with art-accepted terminology before further action is made.
Use form paragraph 7.01 where the terminology is such that a proper search cannot be made.
¶ 7.01 Use of Unconventional Terminology, Cannot Be Examined
A preliminary examination of this application reveals that it includes terminology which is so different from that which is generally accepted in the art to which this invention pertains that a proper search of the prior art cannot be made. For example: [1]
Applicant is required to provide a clarification of these matters or correlation with art-accepted terminology so that a proper comparison with the prior art can be made. Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
Examiner Note:
- 1. Use this or form paragraph 7.02 when a proper search cannot be made. However, see MPEP § 702.01 which requires a reasonable search.
- 2. In bracket 1, fill in an appropriate indication of the terminology, properties, units of data, etc. that are the problem as well as the pages of the specification involved.
- 3. For the procedure to be followed when the drawing is not acceptable, see MPEP §§ 608.02(a) and 608.02(b).
Use form paragraph 7.02 where the application is so incomprehensible that a reasonable search cannot be made.
¶ 7.02 Disclosure Is Incomprehensible
The disclosure is objected to under 37 CFR 1.71, as being so incomprehensible as to preclude a reasonable search of the prior art by the examiner. For example, the following items are not understood: [1]
Applicant is required to submit an amendment which clarifies the disclosure so that the examiner may make a proper comparison of the invention with the prior art.
Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
Examiner Note:
- 1. Use this form paragraph when a search cannot be made.
- 2. In bracket 1, indicate the page numbers and features which are not understood.
- 3. See form paragraphs 6.28 and 6.30 for improper idiomatic English.
- 4. Use form paragraphs 7.31.01 – 7.31.04, as appropriate, for a rejection of claims (when necessary) based on the deficiencies set forth in this form paragraph.
For the procedure to be followed when the drawing is not acceptable, see MPEP §§ 608.02(a) and 608.02(b).
