217 Incorporation by Reference Under 37 CFR 1.57(b) [R-07.2015]

I. IN GENERAL

37 CFR 1.57(b) (formerly 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, international, or international design 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(b) 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(b)

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(b):

• (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, international, or international design 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 1.53(e) 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

The provisions set forth in 37 CFR 1.57(b) became effective on September 21, 2004 and apply 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(b) 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(b), 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(b). 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(b) requires that the material to be added to the later-filed application under 37 CFR 1.57(b) 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(b).

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(b) 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(b). The amendment must be in compliance with 37 CFR 1.57(b) 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(b).

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(b). 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 1.53(e) 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(b) in response to the notice if applicant wants to rely on 37 CFR 1.57(b). See MPEP § 601.01(d) and § 601.01(f).

G.International Applications

Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) 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(b) 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.

H.International Design Applications

Any amendment to an international design application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the filing date of the application. In addition, no request to add the inadvertently omitted portion of the specification or drawings in an international design application will be acted upon by the Office prior to the international design application becoming a nonprovisional application.

III. EXAMPLES 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(b) is not in compliance with 37 CFR 1.57(b). 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).

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