Chapter 200 Types, Cross-Noting, and Status of Application ---SECTION---201 Types of Applications 35 U.S.C. 111 Application. (a) IN GENERAL.- (1) WRITTEN APPLICATION.-An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Commissioner. (2) CONTENTS.-Such 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. (3) FEE AND OATH.-The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Commissioner. (4) FAILURE TO SUBMIT.-Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Commissioner that the delay in submitting the fee and oath was unavoidable or unintentional. 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. (b) PROVISIONAL APPLICATION.- (1) AUTHORIZATION.-A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Commissioner. Such application shall include- (A) a specification as prescribed by the first paragraph of section 112 of this title; and (B) a drawing as prescribed by section 113 of this title. (2) CLAIM.-A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application. (3) FEE.-(A) The application must be accompanied by the fee required by law. (B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Commissioner. (C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Commissioner that the delay in submitting the fee was unavoidable or unintentional. (4) FILING DATE.-The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office. (5) ABANDONMENT.-The provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival thereafter. (6) OTHER BASIS FOR PROVISIONAL APPLICATION.-Subject to all the conditions in this subsection and section 119(e) of this title, and as prescribed by the Commissioner, an application for patent filed under subsection (a) may be treated as a provisional application for patent. (7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.-A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) of this title or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c) of this title. (8) APPLICABLE PROVISIONS.-The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title. 37 CFR 1.9 Definitions. (a)(1) A national application as used in this chapter means a U.S. application for patent which was either filed in the Office under 35 U.S.C. 111, or which entered the national stage from an international application after compliance with 35 U.S.C. 371. (2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b). (3) A nonprovisional application as used in this chapter means a U.S. national application for patent which was either filed in the Office under 35 U.S.C. 111(a), or which entered the national stage from an international application after compliance with 35 U.S.C. 371. (b) An international application as used in this chapter means an international application for patent filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage. +++ NATIONAL APPLICATIONS (35 U.S.C. 111) VS. NATIONAL STAGE APPLICATIONS (35 U.S.C. 371) Nonprovisional and provisional applications are national applications. Treatment of national applications under 35 U.S.C. 111 and national stage applications under 35 U.S.C. 371 are similar but not identical. Note the following examples: (A) Restriction practice under MPEP Section 806+ is applied to national applications under 35 U.S.C. 111(a) while unity of invention practice under MPEP Chapter 1800 is applied to national stage applications under 35 U.S.C. 371. (B) National nonprovisional applications filed under 35 U.S.C. 111(a) without an executed oath or declaration or filing fee are governed by the notification practice set forth in 37 CFR 1.53(f) while national stage applications filed under 35 U.S.C. 371 without an oath or declaration or national stage fee are governed by the notification practice set forth in 37 CFR 1.494 and 1.495. National patent applications fall under three broad types: (A) applications for patent under 35 U.S.C. 101 relating to a "new and useful process, machine, manufacture, or composition of matter, etc."; (B) applications for plant patents under 35 U.S.C. 161; and (C) applications for design patents under 35 U.S.C. 171. The first type of patents are sometimes referred to as "utility" patents or "mechanical" patents when being contrasted with plant or design patents. The specialized procedure which pertains to the examination of applications for design and plant patents are treated in detail in Chapters 1500 and 1600, respectively. National applications include original (nonprovisional), provisional, plant, design, reissue, divisional, and continuation applications (which may be filed under 37 CFR 1.53(b)), continued prosecution applications (CPA) (filed under 37 (CFR 1.53(d)) and continuation-in-part applications (which may be filed under 37 CFR 1.53(b). ---SECTION---201.01 Sole An application wherein the invention is presented as that of a single person is termed a sole application. ---SECTION---201.02 Joint A joint application is one in which the invention is presented as that of two or more persons. See MPEP Section 605.07. ---SECTION---201.03 Correction of Inventorship in an Application Correction of inventorship in an application is permitted by amendment under 35 U.S.C. 116, which is implemented by 37 CFR 1.48. The utilization of a petition under 37 CFR 1.48 will generally correct the inventorship in the application in which it is filed. 37 CFR 1.48(a) is directed at correcting the inventorship in an application where the inventorship was improperly set forth in the executed oath or declaration filed in the application. 37 CFR 1.48(b) is directed at correcting the inventorship where the executed oath or declaration had correctly set forth the inventorship but due to prosecution of the application, e.g., claim cancellation or amendment, fewer than all of the currently named inventors are the actual inventors of the remaining claims. 37 CFR 1.48(c) is directed at correcting the inventorship where the executed oath or declaration had correctly set forth the inventorship but due to amendment of the claims to include previously unclaimed but disclosed subject matter, one or more inventors of the amended subject matter must be added to the current inventorship. 37 CFR 1.48(d) is directed at provisional applications where an inventor is to be added. 37 CFR 1.48(e) is directed at provisional applications where an inventor is to be deleted. 37 CFR 1.48(f) operates to automatically correct the inventorship upon filing of an executed oath or declaration under 37 CFR 1.63 in a nonprovisional application or upon filing of a cover sheet in a provisional application. Correction of inventorship may also be obtained by the filing of a continuing application under 37 CFR 1.53 without the need for filing a petition under 37 CFR 1.48, either in the application containing the inventorship error (to be abandoned) or in the continuing application. The continuing application must be filed with the correct inventorship named therein. The filing of a continuing application to correct the inventorship is appropriate if at least one of the correct inventors has been named in the prior application (35 U.S.C. 120 and 37 CFR 1.78(a)(1)). That is, at least one of the correct inventors must be named in the executed oath or declaration filed in the prior application, or where no executed oath or declaration has been submitted in the prior application but the names of the inventors were set forth in the application papers pursuant to 37 CFR 1.41(a)(1). Where the names of the inventors are to be added, correction of inventorship can be accomplished by filing a continuing application under 37 CFR 1.53(b) with a newly executed oath or declaration under 37 CFR 1.63(a). Where the name of an inventor(s) is to be deleted, applicant can file a continuing application with a request for deletion of the name of the inventor(s). The continuing application may be filed under 37 CFR 1.53(b) or 37 CFR 1.53(d). Note the requirements of 37 CFR 1.78 (a)(1)(ii)-(iv). In certain instances where the statement of the lack of deceptive intent of the inventor to be added or deleted cannot be obtained, a petition under 37 CFR 1.183 requesting waiver of that requirement may be possible. For provisional applications, it may not be necessary to correct the inventorship under 37 CFR 1.48 (d) and (e) unless there would be no overlap of inventors upon the filing of the nonprovisional application with the correct inventorship. See this MPEP section, headings "37 CFR 1.48(d)" and "37 CFR 1.48(e)." The need to correct the inventorship in any U.S. nonprovisional or provisional application may in part be dependent upon whether a foreign filing under the Paris Convention will occur subsequent to the U.S. filing. See MPEP Section 201.13. 37 CFR 1.48 does not apply to reissue applications as is noted in its title, whether correcting an inventorship error in the patent to be reissued or in the reissue application itself. Where an error in inventorship is present in a reissue oath or declaration filed under 37 CFR 1.63 and 1.175, the error may be corrected by the submission of a newly executed oath or declaration under 37 CFR 1.63 and 1.175 listing the correct inventive entity. See MPEP Section 1481. Where a petition under 37 CFR 1.48 is denied in a final agency action, the examiner must determine whether a rejection under 35 U.S.C. 102(f) or (g) is appropriate. Where the petition under 37 CFR 1.48 has been entered (for a decision thereon) and is dismissed (due to a defect that can be corrected) consideration under 35 U.S.C. 102(f) or (g) would be premature. Although 37 CFR 1.48 does not contain a diligence requirement for filing the petition, once an inventorship error is discovered, timeliness requirements under 37 CFR 1.116 and 37 CFR 1.312 apply. For allowed applications where the issue fee has been paid prior to the entry of a petition under 37 CFR 1.48, if the petition under 37 CFR 1.48 is dismissed or denied in an Office action, the application must be withdrawn from issue so that applicant would be given time to correct the defect(s). If the petition under 37 CFR 1.48 is granted, then it would not be necessary to withdraw the application from issue. Petitions under 37 CFR 1.48 are generally decided by the primary examiner except: (A) When the application is involved in an interference (decided by the Board of Patent Appeals and Interferences); (B) When the application is a national stage application filed under 35 U.S.C. 371 (decided in the PCT Legal Office); (C) When accompanied by a petition under 37 CFR 1.183 requesting waiver of a requirement under 37 CFR 1.48(a) or (c), e.g., waiver of the statement of lack of deceptive intent by an inventor to be added or deleted, or waiver of the reexecution of the declaration by all of the inventors (decided in the Office of Petitions); and (D) When a second conversion under 37 CFR 1.48(a) is attempted (decided by the Group Director). When any petitions for correction of inventorship under 37 CFR 1.48(a)-(c), or change in name under 37 CFR 1.182 are granted, the examiner will acknowledge any addition or deletion of the names of inventors by using either Form Paragraph 2.14 or Form Paragraph 2.14.01 in the next Office communication to applicant or his attorney. It will be necessary to revise the PALM records, issue a corrected filing receipt, and change the bib-data sheet on the file wrapper. The correction or change should be noted on the original oath or declaration by writing in red ink in the left column "See Paper No. __ for inventorship changes or corrections." See MPEP Section 605.04(g). 2.14 Correction of Inventorship Under 37 CFR 1.48(a) or (c), Sufficient In view of the papers filed [1], it has been found that this nonprovisional application, as filed, through error and without deceptive intent, improperly set forth the inventorship, and accordingly, this application has been corrected in compliance with 37 CFR 1.48 ([2]). The inventorship of this application has been changed by [3]. The application will be forwarded to the Office of Initial Patent Examination (OIPE) for issuance of a corrected filing receipt, and correction of the file jacket and PTO PALM data to reflect the inventorship as corrected. Examiner Note: 1. In bracket 2, insert --a-- or --c--, as appropriate. 2. In bracket 3, insert explanation of correction made, including addition or deletion of appropriate names. 2.14.01 Correction of Inventorship Under 37 CFR 1.48(b), Sufficient In view of the papers filed [1], the inventorship of this nonprovisional application has been changed by the deletion of [2]. The application will be forwarded to the Office of Initial Patent Examination (OIPE) for issuance of a corrected filing receipt, and correction of the file jacket and PTO PALM data to reflect the inventorship as corrected. Examiner Note: 1. This form paragraph is to be used only for 37 CFR 1.48(b) corrections. 2. In bracket 2, insert the names of the deleted inventor(s). The grant or denial of a petition under 37 CFR 1.48(a) may result in the lack of inventorship overlap between a parent application and a continuing application and the consequent inability to claim benefit in the continuing application of the parent application's filing date under 35 U.S.C. 120. Intervening references must then be considered. For correction of inventorship in a patent, see 37 CFR 1.324 and MPEP Section 1481. A petition under 37 CFR 1.48 will not be required: (A) Where an application is to issue with the correct inventorship based on the allowed claims even though the application may have been filed with an incorrect inventorship based on the claims as originally submitted; (B) Where a typographical or transliteration error in the spelling of an inventor's name is discovered, the Office should simply be notified of the error. A new oath or declaration is not required. Reference to the notification will be made on the previously filed oath or declaration. See 37 CFR 1.19(h) for issuance of a corrected filing receipt; (C) Where an inventor's name has been changed after the application has been filed, see MPEP Section 605.04(c); (D) Where a court has issued an order under 35 U.S.C. 256 for correction of the inventorship of a patent, it should be submitted directly to the Certificate of Correction Division along with the Office's certificate of correction form, PTO-1050. A new declaration under 37 CFR 1.63 is not required; (E) Where there is no change of individual but an incorrect name was given, see 37 CFR 1.182 and MPEP Section 605.04(g); (F) In a nonprovisional application filed under 35 U.S.C. 111(a), where the first-filed executed oath or declaration was filed on or after December 1, 1997 and names the correct inventors, but the inventive entity on the executed oath or declaration differs from that which was set forth on filing of the application, e.g., the application transmittal letter or an unexecuted oath or declaration. See 37 CFR 1.48(f)(1); (G) In a provisional application filed under 35 U.S.C. 111(b), where the cover sheet was filed on or after December 1, 1997 which names the correct inventors, but the inventive entity on the cover sheet differs from that which was set forth on filing of the provisional application without a cover sheet. See 37 CFR 1.48(f)(2). APPLICATIONS FILED UNDER 37 CFR 1.53(f) - NO OATH/DECLARATION The Office will issue a filing receipt listing the inventors identified at the time of filing of the application even if the application was filed under 37 CFR 1.53(f) without an executed oath or declaration. Where the first-filed executed oath or declaration was filed on or after December 1, 1997 and sets forth an inventive entity which is different from the inventive entity initially set forth at the time of filing of the application, the actual inventorship of the application will be taken from the executed oath or declaration. See 37 CFR 1.41(a)(1). A petition under 37 CFR 1.48(a) will not be necessary. See 37 CFR 1.48(f). Where the first-filed executed oath or declaration was submitted prior to December 1, 1997 in an application filed without an executed oath or declaration, if the inventive entity identified on the executed oath or declaration differs from the inventive entity identified at the time of filing of the application, a petition under 37 CFR 1.48(a) or (c) must also be submitted. Upon the grant of the petition under 37 CFR 1.48 by the primary examiner, the application will be returned to the Office of Initial Patent Examination (OIPE) for the mailing of a corrected filing receipt. The original named inventors should not execute or submit an oath or declaration under 37 CFR 1.63 merely to timely complete the filing requirements in reply to a "Notice to File Missing Parts of Application" where the possibility of an error in inventorship has been discovered or signed by someone who cannot properly make the averments therein. Additional time to reply to the Notice is available under 37 CFR 1.136(a) and possibly under 37 CFR 1.136(b). Example A nonprovisional application is filed (either prior to, on or after December 1, 1997) naming A as the sole inventor without an executed declaration under 37 CFR 1.63. Only claim 1 is presented. A "Notice to File Missing Parts of Application" is mailed prior to December 1, 1997. In timely reply thereto after December 1, 1997, a preliminary amendment adding claim 2, and a declaration under 37 CFR 1.63 executed by inventors A and B are submitted with B being added in view of claim 2. A petition under 37 CFR 1.48(c) is not required, in that 37 CFR 1.48(f)(1) will act to set forth an inventorship of A and B. Similarly, where a preliminary amendment canceling or amending claims concomitantly requires the deletion of an inventor, such deletion may be accomplished by the submission of a first-filed executed oath or declaration on or after December 1, 1997 naming the actual inventive entity. A petition under 37 CFR 1.48(b) would not be necessary. 37 CFR 1.48(a) 37 CFR 1.48 Correction of inventorship in a patent application, other than a reissue application. (a) If the inventive entity is set forth in error in an executed Section 1.63 oath or declaration in an application, other than a reissue application, and such error arose without any deceptive intention on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, the application may be amended to name only the actual inventor or inventors. When the application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under Section 1.634. Such amendment must be accompanied by: (1) A petition including a statement from each person being added as an inventor and from each person being deleted as an inventor that the error in inventorship occurred without deceptive intention on his or her part; (2) An oath or declaration by the actual inventor or inventors as required by Section 1.63 or as permitted by Section Section 1.42, 1.43 or 1.47; (3) The fee set forth in Section 1.17(i); and (4) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see Section 3.73(b)). +++ Under 37 CFR 1.48(a), if the correct inventor or inventors are not named in an executed oath or declaration under 37 CFR 1.63 in a nonprovisional application for patent, the application can be amended to name only the actual inventor or inventors so long as the error in the naming of the inventor or inventors occurred without any deceptive intention on the part of the person named as an inventor in error or the person who through error was not named as an inventor. 37 CFR 1.48(a) requires that the amendment be accompanied by: (1) a petition including a statement from each person being added and from each person being deleted as an inventor that the error occurred without deceptive intention on his or her part; (2) an oath or declaration by each actual inventor or inventors as required by 37 CFR 1.63 or as permitted by 37 CFR 1.42, 1.43 or 1.47; (3) the fee set forth in 37 CFR 1.17 (i); and (4) the written consent of any existing assignee, if any of the originally named inventors has executed an assignment. Correction may be requested in cases where the person originally named as inventor was in fact not an inventor or the sole inventor of the subject matter being claimed. If such error occurred without any deceptive intention on the part of the inventor named and/or not named in error, the Office has the authority to substitute the true inventive entity for the erroneously named inventive entity. Instances where corrections can be made include changes from: a mistaken sole inventor to a different but actual sole inventor; a mistakenly identified sole inventor to different, but actual, joint inventors; a sole inventor to joint inventors to include the original sole inventor; erroneously identified joint inventors to different but actual joint inventors; erroneously identified joint inventors to a different, but actual, sole inventor. (Note that 35 U.S.C. 120 and 37 CFR 1.78 require an overlap of inventorship, hence, refiling, rather than petitioning under 37 CFR 1.48, to change inventorship where the change would not result in an inventorship overlap may result in the loss of a priority claim.) A. Statement of Lack of Deceptive Intention Where a similar inventorship error has occurred in more than one application for which correction is requested wherein petitioner seeks to rely on identical statements, only one original set need be supplied if copies are submitted in all other applications with a reference to the application containing the originals (original oaths or declarations under 37 CFR 1.63 and written consent of assignees along with separate petition fees must be filed in each application). The statement required from each inventor being added or deleted may simply state that the inventorship error occurred without deceptive intention. The statement need not be a verified statement (see MPEP Section 605). On very infrequent occasions, the requirements of 37 CFR 1.48(a) have been waived upon the filing of a petition and fee under 37 CFR 1.183 (along with the petition and fee under 37 CFR 1.48(a)) to permit the filing of a statement by less than all the parties required to submit a statement. In re Cooper, 230 USPQ 638, 639 (Dep. Assist. Comm'r Pat. 1986). However, such a waiver will not be considered unless the facts of record unequivocally support the correction sought. In re Hardee, 223 USPQ 1122, 1123 (Comm'r Pat. 1984). As 37 CFR 1.48(a) is intended as a simple procedural remedy and does not represent a substantive determination as to inventorship, issues relating to the inventors' or alleged inventors' actual contributions to conception and reduction to practice are not appropriate for consideration in determining whether the record unequivocally supports the correction sought. In those situations where an inventor to be added refuses to submit a statement supporting the addition or such party cannot be reached, waiver under 37 CFR 1.183 of the requirement for a statement from that party would be appropriate upon a showing of such refusal or inability to reach the inventor. Every existing assignee of the original named inventors must give its consent to the requested correction. Where there is more than one assignee giving its consent, the extent of that interest (percentage) should be shown. Where no assignment has been executed by the inventors, or if deletion of a refusing inventor is requested, waiver will not be granted absent unequivocal support for the correction sought. Petitions under 37 CFR 1.47 are not applicable to the requirement for statements from each originally named inventor. An available remedy to obtain correction of inventorship where waiver of a required statement is not available to correct the inventorship in a particular application is to refile the application naming the correct inventive entity. A petition under 37 CFR 1.48(a) would not then be required in the newly filed application as no correction would be needed. Furthermore, a petition under 37 CFR 1.48(a) would also not be required in the prior application that was refiled, since the prior application will be abandoned. Benefit of the parent application's filing date would be available under 35 U.S.C. 120 provided there is at least one inventor overlap between the two applications. (Note: a sole-to-sole correction would not obtain benefit under 35 U.S.C. 120). B. Oath or Declaration An oath or declaration under 37 CFR 1.63 by each actual inventor must be presented. While each inventor need not execute the same oath or declaration, each oath or declaration executed by an inventor must contain a complete listing of all inventors so as to clearly indicate what each inventor believes to be the appropriate inventive entity. Where individual declarations are executed, they must be submitted as individual declarations rather than combined into one declaration. For example, where the inventive entity is A and B, a declaration may not be executed only by A naming only A as the inventor and a different declaration may not be executed only by B naming only B as the inventor, which two declarations are then combined into one declaration with a first page of boiler plate, a second page with A's signature, and a second page with B's signature (so that it appears that the declaration was executed with the entire inventive entity appearing in the declaration when it did not). Conflicting oaths or declarations filed: If the first executed oaths or declarations that are submitted name different inventive entities (e.g., one declaration names A, B, and C as inventors and a second declaration names D as the inventor) and are filed on the same day, the application will be considered to name the inventors named in both declarations (A, B, C, and D) and a new oath or declaration in compliance with 37 CFR 1.63 including the entire inventive entity will be required. Where an application is filed with an executed declaration under 37 CFR 1.63 naming an inventive entity that is in conflict with another paper filed in the application, such as the transmittal letter, the executed declaration will govern. However, where an executed declaration is never submitted and the application papers are in conflict as to the inventorship, each party identified as an inventor on filing will be considered to have been named as part of the inventive entity. See 37 CFR 1.41(a)(1). 37 CFR 1.47 is available to meet the requirement for an oath or declaration under 37 CFR 1.63 as for example where A, B, and C were originally named as inventors and D who refuses to cooperate is to be later added as an inventor. The oath or declaration under 37 CFR 1.63 of inventor D may be supplied pursuant to 37 CFR 1.47(a), but note that the required 37 CFR 1.48(a)(1) statement must still be supplied by inventor D (an unlikely event in view of the inability to obtain the executed oath or declaration under 37 CFR 1.63), or waiver thereof petitioned under 37 CFR 1.183. Alternatively, where D is to be added as an inventor (where inventors A, B, and C have previously executed the application under 37 CFR 1.63) and it is original inventor A who refuses to cooperate, the statement under 37 CFR 1.48(a)(1) is only required to be signed by inventor D. Originally named inventor A is merely required to reexecute an oath or declaration in compliance with 37 CFR 1.63. Petitions under 37 CFR 1.47 are only applicable to an original oath or declaration and are not applicable to the reexecution of another oath or declaration by A. In such circumstances, a petition under 37 CFR 1.183 should be considered requesting waiver of the requirement of 37 CFR 1.64 that each of the actual inventors, i.e., inventor A, execute the oath or declaration, particularly where assignee consent is given to the requested correction. Absent assignee consent, the petition under 37 CFR 1.183 requesting waiver of the reexecution of the oath or declaration will be evaluated as to whether the nonsigning inventor was actually given the opportunity to reexecute the oath or declaration, or whether the nonsigning inventor could not be reached. Applications filed with both petitions under 37 CFR 1.47 and 1.48(a) will be forwarded to the Office of Petitions, after mailing the filing receipt by the Office of Initial Patent Examination, for consideration of the petitions. In those instances wherein petitions under 37 CFR 1.48(a) and 37 CFR 1.47 have both been filed in an application, the Office of Petitions may first issue a decision on the petition under 37 CFR 1.48(a) so as to determine the appropriate oath or declaration under 37 CFR 1.63 required for the petition under 37 CFR 1.47. The oath or declaration submitted subsequent to the filing date (37 CFR 1.53(f)) of an application filed under 37 CFR 1.53(b) must clearly identify the previously filed specification it is intended to execute. See MPEP Section 601.01(a). C. Fee Where waiver under 37 CFR 1.183 is requested in relation to a requirement under 37 CFR 1.48(a), petition fees under both 37 CFR 1.48(a) and 37 CFR 1.183 are required. Similarly, where in addition to a petition under 37 CFR 1.48, two petitions under 37 CFR 1.183 are presented, e.g., one requesting waiver of a requirement under 37 CFR 1.48 and the other requesting waiver of the reexecution of an oath or declaration under 37 CFR 1.64, three petition fees are required (one for the petition filed under 37 CFR 1.48 and two for the petitions filed under 37 CFR 1.183). Where a similar error has occurred in more than one application a separate petition fee must be submitted in each application in which correction is requested. If the petition fee has not been submitted or authorized the petition will be dismissed. D. Written Consent of Assignee The written consent of every existing assignee of the original named inventors must be submitted. 37 CFR 1.48(a)(4). 37 CFR 1.48(a) does not limit assignees to those who are recorded in the Patent and Trademark Office records. The Office employee deciding the petition should check the file record for any indication of the existence of an assignee (e.g., a small entity statement from an assignee.) Where no assignee exists petitioner should affirmatively state that fact. If the file record including the petition is silent as to the existence of an assignee it will be presumed that no assignee exists. Such presumption should be set forth in the decision to alert petitioners to the requirement. The individual signing on behalf of the assignee giving its consent to the requested inventorship correction, should specifically state that he or she has the authority to act on behalf of the assignee. In the absence of such a statement, the consent will be accepted if it is signed by an appropriate official of the assignee (e.g., president, vice president, secretary, treasurer, or derivative thereof) if the official's title has been made of record. A general statement of authority to act for the assignee, or on the specific matter of consent, or the appropriate title of the party signing on behalf of the assignee should be made of record in the consent. However, if it appears in another paper of record, e.g., small entity statement, it is also acceptable. Further, the assignee must establish its ownership of the application in accordance with 37 CFR 3.73. MPEP Section 324. E. Continuing Applications 35 U.S.C. 120 permits a continuing application to claim the benefit of the filing date of a copending, previously filed, parent application provided there is inventorship overlap between the continuing application and the parent application. If the inventive entity of a continuing application includes an inventor named in the parent application, the inventorship overlap required by 35 U.S.C. 120 is met. Example The parent application names inventors A and B and claims inventions 1 and 2. Inventor A contributes only to invention 1 and inventor B contributes only to invention 2. A restriction requirement is made and invention 1 was elected. Upon allowance of claims directed to invention 1 and cancellation of claims directed to invention 2, a petition under 37 CFR 1.48(b) was filed requesting deletion of inventor B. The petition under 37 CFR 1.48(b) was granted by the primary examiner. Prior to the issuance of the parent application, a divisional application claiming benefit under 35 U.S.C. 120 to the parent application, is filed claiming only invention 2 and naming only inventor B. The inventorship overlap required by 35 U.S.C. 120 is met in this instance even though at the time of filing of the divisional application, the inventorship overlap was lost as a result of the deletion of an inventor in the parent application. The overlap of inventorship need not be present on the date the continuing application is filed nor present when the parent application issues or becomes abandoned. On filing a continuing application under 37 CFR 1.53(b) or (d) it should not be assumed that an error in inventorship made in a parent application was in fact corrected therein in response to a petition under 37 CFR 1.48(a) unless a decision from the Patent and Trademark Office to that effect was received by petitioner. In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), a petition to add an inventor to a parent application that was not acted on (e.g., filed after final rejection) will be automatically considered in the CPA. Until the petition is granted, however, the inventorship remains the same as the prior application. A continuing application naming the additional inventor can be filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) with a newly executed oath or declaration by the new inventive entity along with a request for priority under 35 U.S.C. 120 without the need for a decision on the petition under 37 CFR 1.48 filed in the parent application. Should an error in inventorship in a parent application be discovered, whether it is the need to add and/or to delete inventors, when preparing to file a continuing application, the continuing application may be filed under 37 CFR 1.53(b) with the correct inventive entity without the need for a petition under 37 CFR 1.48(a) in the parent or continuing application provided the parent application is to be abandoned on filing of the continuing application. In filing the continuing application under 37 CFR 1.53(b), a copy of an oath or declaration from the prior application can only be used where inventors are to be deleted (37 CFR 1.53(b)(1) and 37 CFR 1.63(d)(1)(ii)), but not where inventors are to be added. Where inventors are to be added, a newly executed oath or declaration must be submitted. See 37 CFR 1.63(d)(5). After discovery of an inventorship error, the application can also be refiled under 37 CFR 1.53(d)(4) as a CPA where inventors are only to be deleted. In filing a continuing application to correct the inventorship, whether utilizing a copy of the oath or declaration from the prior application under 37 CFR 1.53(b) or a CPA filing under 37 CFR 1.53(d), it is important to recognize that 37 CFR 1.78 requires for priority purposes that the prior application must either have had the filing fee, or the retention fee as set forth in 37 CFR 1.21(l), paid within the period set forth in 37 CFR 1.53(f) so as to establish copendency. See 37 CFR 1.78(a)(1)(iii) and 37 CFR 1.78(a)(1)(iv). Should a continuing application be filed either under 37 CFR 1.53(b)(1) where a copy of the oath or declaration from the prior application is utilized, or under 37 CFR 1.53(d) as a CPA, and purports to add an inventor, the inventorship of the prior application will be retained in the continuing application as addition of an inventor is not permitted in these instances. The absence of a petition to correct the inventorship submitted with the continuing application will not affect the filing date of the continuing application. However, the retained inventorship must then be corrected by the filing of a petition under 37 CFR 1.48(a) in the continuing application stating that the error in failing to name the additional inventor in the prior application was without deceptive intention. Where an inventor is to be added, it is recommended that a continuing application be filed under 37 CFR 1.53(b) with a newly executed oath or declaration and not be filed with a copy of the oath or declaration from the prior application. This procedure eliminates the need for a petition under 37 CFR 1.48. An inventorship error discovered while prosecuting a continuing application that occurred in both an abandoned parent application and the continuing application can be corrected in both applications by filing a single petition in the continuing application (e.g., A + B named in parent, B + C named in continuing application, actual inventorship is C +D thereby eliminating inventorship overlap and resulting loss of priority claim under 35 U.S.C. 120 if the error is not corrected in abandoned parent application as well as in continuation application). Absent such loss of inventorship overlap, correction need not be made in the abandoned application. When entering the national stage under 35 U.S.C. 371, correction of inventorship is via the provisions of 37 CFR 1.48(a). Whereas the first sentence of 37 CFR 1.48(a) refers to errors in the 37 CFR 1.63 oath or declaration, this is analogous to the misnaming of the applicant/inventor in the international application, and the procedure under 37 CFR 1.48(a) applies. 2.13 Correction of Inventorship Under 37 CFR 1.48(a), Insufficient The petition to correct the inventorship of this nonprovisional application under 37 CFR 1.48(a) is deficient because: Examiner Note: 1. This paragraph should only be used in response to requests to correct an error in the naming of the prior inventors in non-provisional applications. If the request is merely to delete an inventor because claims were canceled or amended such that the deleted inventor is no longer an actual inventor of any claim in the application, use paragraph 2.13.01 instead of this paragraph. Potential rejections A rejection under 35 U.S.C. 102(f) or (g) must be considered if the petition is denied. The grant or denial of the petition may result in the loss of inventorship overlap between a parent application and a continuing application and an inability to claim benefit in the continuing application of the parent application's filing date under 35 U.S.C. 120. Intervening references must then be considered. 2. A primary examiner may not decide the petition if: (a) the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.48(a) (typically a refusal of one of the inventors to be added or deleted to execute the required statement of facts) - the petition for correction of inventorship and request for waiver of the rules should be forwarded to the Office of Petitions; or (b) it represents an attempt to effect a second conversion under 37 CFR 1.48(a) - the second attempt must be returned to the Group Director. 3. One or more of form paragraphs 2.13a - 2.13e should follow this form paragraph, as applicable. 4. Where it appears that: 1) the inventor(s) to be added or deleted may be hostile and will not execute a required statement of facts, and 2) the actual inventorship would overlap the original inventorship (37 CFR 1.78), follow this form paragraph with form paragraph 2.13f. 5. Petitions under 37 CFR 1.41 to change inventorship where an executed oath or declaration has not been filed are to be acted upon by OIPE. 6. Where there is a correction in a person's name, e.g., due to misspelling, or marriage, a petition under 37 CFR 1.48 is inappropriate. See MPEP Section 605.04(b) and (c) for name changes. 7. An initial executed oath or declaration under 37 CFR 1.63 may change the inventorship as originally set forth when the application is filed without an executed oath or declaration without petition for correction of inventorship (37 CFR 1.48(f)). 2.13a Statement of Facts Problem (for Use Following FP 2.13, If Applicable) The statement of facts by an inventor or inventors to be added or deleted does not explicitly state that the inventorship error occurred without deceptive intent on his or her part or cannot be construed to so state. 2.13b No New Oath or Declaration (for Use Following FP 2.13 or 2.13.02, If Applicable) An oath or declaration by each actual inventor or inventors listing the entire inventive entity has not been submitted. 2.13c Required Fee Not Submitted (for Use Following FP 2.13, 2.13.01 or 2.13.02, If Applicable) It lacks the required fee under 37 CFR 1.17(i). 2.13d Written Consent Missing (for Use Following FP 2.13 or 2.13.02, If Applicable) It lacks the written consent of any assignee of one of the originally named inventors. 2.13e 37 CFR 3.37(b) Submission (for Use Following FP 2.13 or 2.13.02, If Applicable) A 37 CFR 3.73(b) submission has not been received to support action by the assignee. 2.13f Hostile Inventor(s)/Inventorship Overlap (for Use Following FP 2.13, If Applicable) As it appears that a party required by 37 CFR 1.48(a)(1) to submit a statement of facts may not be willing to submit such statement, applicant should consider either: a) submission of a petition under 37 CFR 1.183 to waive that requirement if the original named inventor(s) has assigned the entire right and interest to an assignee who has given its consent to the requested inventorship correction, MPEP Section 201.03, Verified Statement of Facts, or b) refiling the application (where addition is needed under 37 CFR 1.53(b) with a new oath or declaration and any necessary petition under 37 CFR 1.47, or where only deletion is needed, either under 37 CFR 1.53(b) utilizing a copy of a prior oath or declaration 37 CFR 1.63(d)(iii), or under 37 CFR 1.53(d)), thereby eliminating the need for a 37 CFR 1.48 petition. 2.13.01 Correction of Inventorship Under 37 CFR 1.48(b), Insufficient The petition requesting the deletion of an inventor in this nonprovisional application under 37 CFR 1.48(b) is deficient because: Examiner Note: 1. This paragraph should only be used when the inventorship was previously correct when originally executed but an inventor is being deleted because claims have been amended or canceled such that he or she is no longer an inventor of any remaining claim in the non-provisional application. If the inventorship is being corrected because of an error in naming the correct inventors, use paragraph 2.13 instead of this paragraph. 2. Follow this form paragraph with one or both of form paragraphs 2.13c and 2.13g. 3. See note 1 of form paragraph 2.13, Potential rejections. 2.13g Statement Under 37 CFR 1.48(b)(1) Problem (for Use Following FP 2.13.01, If Applicable) The petition lacks the statement required under 37 CFR 1.48 (b)(1). 2.13.02 Correction of Inventorship Under 37 CFR 1.48(c), Insufficient The petition to correct the inventorship in this nonprovisional application under 37 CFR 1.48(c) requesting addition of an inventor(s) is deficient because: Examiner Note: 1. This paragraph should only be used when the inventorship was previously correct when the application was originally executed, but the inventorship now needs to be changed due to subsequent addition of subject matter from the specification to the claims, which subject matter was contributed by a party not originally named as an inventor. 2. See note 2 of form paragraph 2.13. 3. Follow this form paragraph with any of form paragraphs 2.13b-12.13e or 2.13h. 4. See note 1 of form paragraph 2.13.01, Potential rejections. 5. See notes 4-7 of form paragraph 2.13. 2.13h Statement of Facts, Added Inventor (for Use Following FP 2.13.02, If Applicable) The statement of facts by the inventor(s) to be added does not explicitly state that the amendment of the inventorship is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intent on the part of the inventor(s) to be added, or cannot be construed to so state. 2.14 Correction of Inventorship Under 37 CFR 1.48(a) or (c), Sufficient In view of the papers filed [1], it has been found that this nonprovisional application, as filed, through error and without deceptive intent, improperly set forth the inventorship, and accordingly, this application has been corrected in compliance with 37 CFR 1.48([2]). The inventorship of this application has been changed by [3]. The application will be forwarded to the Office of Initial Patent Examination (OIPE) for issuance of a corrected filing receipt, and correction of the file jacket and PTO PALM data to reflect the inventorship as corrected. Examiner Note: 1. In bracket 2, insert --a-- or --c--, as appropriate. 2. In bracket 3, insert explanation of correction made, including addition or deletion of appropriate names. 2.14.01 Correction of Inventorship Under 37 CFR 1.48(b), Sufficient In view of the papers filed [1], the inventorship of this nonprovisional application has been changed by the deletion of [2]. The application will be forwarded to the Office of Initial Patent Examination (OIPE) for issuance of a corrected filing receipt, and correction of the file jacket and PTO PALM data to reflect the inventorship as corrected. Examiner Note: 1. This form paragraph is to be used only for 37 CFR 1.48(b) corrections. 2. In bracket 2, insert the names of the deleted inventor(s). 37 CFR 1.48(b) 37 CFR 1.48 Correction of inventorship in a patent application, other than a reissue application. +++ (b) If the correct inventors are named in a nonprovisional application, other than a reissue application, and the prosecution of the application results in the amendment or cancellation of claims so that fewer than all of the currently named inventors are the actual inventors of the invention being claimed in the application, an amendment must be filed deleting the name or names of the person or persons who are not inventors of the invention being claimed. When the application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under Section 1.634. Such amendment must be accompanied by: (1) A petition including a statement identifying each named inventor who is being deleted and acknowledging that the inventor's invention is no longer being claimed in the application; and (2) The fee set forth in Section 1.17(i). +++ 37 CFR 1.48(b) provides for deleting the names of persons originally properly included as inventors, but whose invention is no longer being claimed in a nonprovisional application. Such a situation would arise where claims have been amended or deleted during prosecution because they are unpatentable or as a result of a requirement for restriction of the application to one invention, or for other reasons. A petition under 37 CFR 1.48(b) to delete an inventor would be appropriate prior to an action by the examining group where it is decided not to pursue particular aspects of an invention attributable to some of the original named inventors. 37 CFR 1.48(b) requires that the amendment be accompanied by: (1) a petition including a statement identifying each named inventor who is being deleted and acknowledging that the inventor's invention is no longer being claimed in the application; and (2) a fee under 37 CFR 1.17(i). The statement may be signed by applicant's registered attorney or agent who then takes full responsibility for ensuring that the inventor is not being improperly deleted from the application. Written consent of any assignee is not required for petitions filed under 37 CFR 1.48(b). 37 CFR 1.48(c) 37 CFR 1.48 Correction of inventorship in a patent application, other than a reissue application. +++ (c) If a nonprovisional application, other than a reissue application, discloses unclaimed subject matter by an inventor or inventors not named in the application, the application may be amended to add claims to the subject matter and name the correct inventors for the application. When the application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under Section 1.634. Such amendment must be accompanied by: (1) A petition including a statement from each person being added as an inventor that the amendment is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intention on his or her part; (2) An oath or declaration by the actual inventor or inventors as required by Section 1.63 or as permitted by Section Section 1.42, 1.43 or 1.47; (3) The fee set forth in Section 1.17(i); and (4) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see Section 3.73(b)). +++ 37 CFR 1.48(c) provides for the situation where a nonprovisional application discloses unclaimed subject matter by an inventor or inventors not named in the application when an executed declaration under 37 CFR 1.63 was first filed. In such a situation, the nonprovisional application may be amended pursuant to 37 CFR 1.48(c) to add claims directed to the originally unclaimed but disclosed subject matter and also to name the correct inventors for the application based on the newly added claims. Any claims added to the application must be supported by the disclosure as filed and cannot add new matter. 37 CFR 1.48(c) requires that the amendment must be accompanied by: (1) a petition including a statement from each person being added as an inventor that the amendment is necessitated by an amendment to the claims and that the inventorship error occurred without deceptive intention on his or her part; (2) an oath or declaration by each actual inventor; (3) the fee under 37 CFR 1.17(i); and (4) the written consent of any assignee of the original named inventors. 37 CFR 1.48(d) 37 CFR 1.48 Correction of inventorship in a patent application, other than a reissue application. +++ (d) If the name or names of an inventor or inventors were omitted in a provisional application through error without any deceptive intention on the part of the omitted inventor or inventors, the provisional application may be amended to add the name or names of the omitted inventor or inventors. Such amendment must be accompanied by: (1) A petition including a statement that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and (2) The fee set forth in Section 1.17(q). +++ 37 CFR 1.48(d) provides a procedure for adding the name of an inventor in a provisional application, where the name was originally omitted without deceptive intent. 37 CFR 1.48(d) requires that the amendment be accompanied by: (1) a petition including a statement that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and (2) the fee set forth in 37 CFR 1.17(q). 37 CFR 1.48(e) 37 CFR 1.48 Correction of inventorship in a patent application, other than a reissue application. +++ (e) If a person or persons were named as an inventor or inventors in a provisional application through error without any deceptive intention on the part of such person or persons, an amendment may be filed in the provisional application deleting the name or names of the person or persons who were erroneously named. Such amendment must be accompanied by: (1) A petition including a statement by the person or persons whose name or names are being deleted that the inventorship error occurred without deceptive intention on the part of such person or persons; (2) The fee set forth in Section 1.17(q); and (3) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see Section 3.73(b)). +++ 37 CFR 1.48(e) provides a procedure for deleting the name of a person who was erroneously named as an inventor in a provisional application. Under 35 U.S.C. 119(e), as contained in Public Law 103 - 465, a later filed application under 35 U.S.C. 111(a) may claim priority benefits based on a copending provisional application so long as the applications have at least one inventor in common. An error in naming a person as an inventor in a provisional application would not require correction by deleting the erroneously named inventor from the provisional application since this would have no effect upon the ability of the provisional application to serve as a basis for a priority claim under 35 U.S.C. 119(e). However, if applicant chooses to correct the inventive entity of a provisional application, 37 CFR 1.48(e) sets forth the procedures for deleting the name of a person erroneously named as an inventor in a provisional application. 37 CFR 1.48(e) requires that the amendment be accompanied by: (1) a petition including a statement of lack of deceptive intent by the person whose name is being deleted establishing that the error occurred without deceptive intention on his or her part; (2) the fee set forth in 37 CFR 1.17(q); and (3) the written consent of any assignee. 37 CFR 1.48(f) 37 CFR 1.48 Correction of inventorship in a patent application, other than a reissue application. +++ (f)(1) If the correct inventor or inventors are not named on filing a nonprovisional application under Section 1.53(b) without an executed oath or declaration under Section 1.63, the later submission of an executed oath or declaration under Section 1.63 during the pendency of the application will act to correct the earlier identification of inventorship. (2) If the correct inventor or inventors are not named on filing a provisional application without a cover sheet under Section 1.51(c)(1), the later submission of a cover sheet under Section 1.51(c)(1) during the pendency of the application will act to correct the earlier identification of inventorship. +++ 37 CFR 1.48(f)(1) and (f)(2) will act to automatically correct an earlier identification of inventorship in a nonprovisional application by the filing of an initial executed oath or declaration and in a provisional application by the filing of an initial cover sheet. A petition and fee is not required for the inventorship correction to occur. 37 CFR 1.48(f)(1) is not applicable for national stage applications filed under 35 U.S.C. 371 where the inventorship has been erroneously named in the international application. Accordingly, if the inventorship set forth in the oath or declaration filed in the national stage application differs from the inventorship specified in the international application, the oath or declaration must be accompanied by a petition under 37 CFR 1.48(a). 37 CFR 1.48(g) 37 CFR 1.48 Correction of inventorship in a patent application, other than a reissue application. +++ (g) The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship. +++ ---SECTION---201.04 Parent Application The term "parent" is applied to an earlier application of an inventor disclosing a given invention. Such invention may or may not be claimed in the first application. Benefit of the filing date of copending parent application may be claimed under 35 U.S.C. 120. The term parent will not be used to describe a provisional application. ---SECTION---201.04(a) Original Application "Original" is used in the patent statute and rules to refer to an application which is not a reissue application. An original application may be a first filing or a continuing application. ---SECTION---201.04(b) Provisional Application 35 U.S.C. 111 Application. +++ (b) PROVISIONAL APPLICATION.- (1) AUTHORIZATION.-A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Commissioner. Such application shall include- (A) a specification as prescribed by the first paragraph of section 112 of this title; and (B) a drawing as prescribed by section 113 of this title. (2) CLAIM.-A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application. (3) FEE.-(A) The application must be accompanied by the fee required by law. (B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Commissioner. (C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Commissioner that the delay in submitting the fee was unavoidable or unintentional. (4) FILING DATE.-The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office. (5) ABANDONMENT.-The provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival thereafter. (6) OTHER BASIS FOR PROVISIONAL APPLICATION.-Subject to all the conditions in this subsection and section 119(e) of this title, and as prescribed by the Commissioner, an application for patent filed under subsection (a) may be treated as a provisional application for patent. (7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.-A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) of this title or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c) of this title. (8) APPLICABLE PROVISIONS.-The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title. +++ 37 CFR 1.9 Definitions. (a)(1) A national application as used in this chapter means a U.S. application for patent which was either filed in the Office under 35 U.S.C. 111, or which entered the national stage from an international application after compliance with 35 U.S.C. 371. (2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b). (3) A nonprovisional application as used in this chapter means a U.S. national application for patent which was either filed in the Office under 35 U.S.C. 111(a), or which entered the national stage from an international application after compliance with 35 U.S.C. 371. +++ 37 CFR 1.53 Application number, filing date, and completion of application. +++ (c) Application filing requirements - Provisional application. The filing date of a provisional application is the date on which a specification as prescribed by the first paragraph of 35 U.S.C. 112, and any drawing required by Section 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application. (1) A provisional application must also include the cover sheet required by Section 1.51(c)(1) or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section. (2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section, (i) Provided that a petition requesting the conversion, with the fee set forth in Section 1.17(q), is filed prior to the earliest of: (A) Abandonment of the application filed under paragraph (b) of this section; (B) Payment of the issue fee on the application filed under paragraph (b) of this section; (C) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or (D) The filing of a request for a statutory invention registration under Section 1.293 in the application filed under paragraph (b) of this section. (ii) The grant of any such petition will not entitle applicant to a refund of the fees which were properly paid in the application filed under paragraph (b) of this section. (3) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or Section 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or Section 1.78 of any other application. No claim for priority under Section 1.78(a)(3) may be made in a design application based on a provisional application. No request under Section 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of Section Section 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications. +++ One of the provisions of the Uruguay Round Agreements Act which is effective as of June 8, 1995, is the establishment of a domestic priority system. The Act provides a mechanism to enable domestic applicants to quickly and inexpensively file provisional applications. Under the provisions of 35 U.S.C. 119(e), applicants are entitled to claim the benefit of priority in a given application in the United States. The domestic priority period will not count in the measurement of the 20-year patent term. See 35 U.S.C. 154(a)(3). Thus, domestic applicants are placed on equal footing with foreign applicants with respect to the patent term. The parts of a provisional application that are required are set forth in 37 CFR 1.51(c) and MPEP Section 601.01 and Section 601.01(b). The filing date of a provisional application is the date on which (1) a specification which complies with 35 U.S.C. 112, first paragraph, and (2) any drawing required by 37 CFR 1.81(a) are filed. A provisional application must also include a cover sheet or cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under 37 CFR 1.53(b). The filing fee is set forth in 37 CFR 1.16(k). NOTE: (A) No claim is required in a provisional application. (B) No oath or declaration is required in a provisional application. (C) Provisional applications will not be examined for patentability, placed in an interference, or made the subject of a statutory invention registration. A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter. Since a provisional application can be pending for no more than 12 months, if the last day of pendency is on a Saturday, Sunday, or Federal holiday, copendency would require that the later filed nonprovisional application be filed on or prior to the Saturday, Sunday, or Federal holiday. See 37 CFR 1.78(a)(3). For example, if a provisional application was filed on June 28,1996, the last day of pendency of the provisional application under 35 U.S.C. 111(b)(5) is June 28, 1997. Since June 28, 1997 is a Saturday, a nonprovisional application claiming the benefit of the provisional application must be filed on or prior to Saturday June 28, 1997 (see 37 CFR 1.78(a)(3)). Note that new patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as "Express Mail" with the United States Postal Service. For example, if a new patent application is deposited in "Express Mail" in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2). A provisional application is not entitled to claim priority benefits based on any other application under 35 U.S.C. 119, 120, 121, or 365. An application filed under 37 CFR 1.53(b) may be converted to a provisional application provided a petition requesting the conversion is submitted along with the fee as set forth in 37 CFR 1.17(q). The petition and fee must be submitted prior to the earlier of the abandonment of the nonprovisional application, the payment of the issue fee, the expiration of 12 months after the filing date of the nonprovisional application, or the filing of a request for statutory invention registration. The grant of any such petition will not entitle applicant to a refund of the fees which were properly paid in the application filed under 37 CFR 1.53(b). Design applications may not make a claim for priority of a provisional application under 37 CFR 1.78(a)(3). Form PTO/SB/16. Provisional Application for Patent Cover Sheet[GRAPHIC] [GRAPHIC] ---SECTION---201.05 Reissue Application A reissue application is an application for a patent to take the place of an unexpired patent that is defective in some one or more particulars. A detailed treatment of reissues will be found in Chapter 1400. ---SECTION---201.06 Division Application A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or "division." It may be filed pursuant to 37 CFR 1.53(b) or 1.53(d). 37 CFR 1.60 and 1.62 have been deleted as of December 1, 1997. The practices set forth in former 37 CFR 1.60 and former 1.62 have been incorporated into 37 CFR 1.53(b) and 1.53(d), respectively. Continued prosecution application (CPA) practice set forth in 37 CFR 1.53(d) has replaced the file wrapper continuing (FWC) practice set forth in former 37 CFR 1.62. Therefore, divisional applications previously filed under 37 CFR 1.60 or 1.62 should now be filed under 37 CFR 1.53(b) or 1.53(d). Both the parent and divisional applications must have at least one common applicant. The divisional application should set forth only that portion of the earlier disclosure which is germane to the invention as claimed in the divisional application. An application claiming the benefits of a provisional application under 35 U.S.C. 119(e) should not be called a "division" of the provisional application since the application will have its patent term calculated from its filing date, whereas an application filed under 35 U.S.C. 120, 121, or 365(c) will have its patent term calculated from the date on which the earliest application was filed, provided a specific reference is made to the earlier filed application(s). 35 U.S.C. 154(a)(2) and (a)(3). In the interest of expediting the processing of newly filed divisional applications, filed as a result of a restriction requirement, applicants are requested to include the appropriate Patent and Trademark Office classification of the divisional application and the status and location of the parent application, on the papers submitted. The appropriate classification for the divisional application may be found in the Office communication of the parent application wherein the requirement was made. It is suggested that this classification designation be placed in the upper right hand corner of the letter of transmittal accompanying these divisional applications. Use Form Paragraph 2.01 to remind applicant of possible division status. 2.01 Definition of Division This application appears to be a division of Application No. [1], filed [2]. A later application for a distinct or independent invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or "division." The divisional application should set forth only that portion of the earlier disclosure which is germane to the invention as claimed in the divisional application. Examiner Note: 1. In bracket 1, insert the Application No.(series code and serial no.) of the parent application. 2. In bracket 2, insert the filing date of the parent application. 3. An application claiming the benefits of a provisional application under 35 U.S.C. 119(e) should not be called a "division" of the provisional application since the application will have its patent term calculated from its filing date, whereas an application filed under 35 U.S.C. 120, 121, or 365(c) will have its term calculated from the date on which the earliest application was filed, provided a specific reference is made to the earlier filed application(s), 35 U.S.C. 154(a)(2) and (a)(3). A design application may be considered to be a division of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112, first paragraph. However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b) not under 37 CFR 1.53(d). Note that 37 CFR 1.60 and 37 CFR 1.62 have been deleted as of December 1, 1997. See MPEP Section 1504.20. While a divisional application may depart from the phraseology used in the parent application there may be no departure therefrom in substance or variation in the disclosure that would amount to "new matter" if introduced by amendment into the parent application. Compare MPEP Section 201.08 and Section 201.11. For notation to be put on the file wrapper by the examiner in the case of a divisional application, see MPEP Section 202.02. ---SECTION---201.06(a) Former 37 CFR 1.60 Divisional-Continuation Procedure [Note: 37 CFR 1.60 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. A continuation or divisional application filed under 37 CFR 1.60 on or after December 1, 1997, will automatically be treated as an application filed under 37 CFR 1.53(b). All continuation and divisional applications filed under 37 CFR 1.60 prior to December 1, 1997 will continue to be processed and examined under the procedures set forth in former 37 CFR 1.60. Thus, the following discussion of divisional-continuation practice under former 37 CFR 1.60 is being retained in the MPEP and all references to the rules in this section are directed to the rules that were in effect prior to December 1, 1997.] 37 CFR 1.60 Continuation or divisional application for invention disclosed in a prior nonprovisional application (a) [Reserved] (b) An applicant may omit signing of the oath or declaration in a continuation or divisional application (filed under the conditions specified in 35 U.S.C.120 or 121 and Section 1.78(a)) if: (1) the prior application was a nonprovisional application and a complete application as set forth in Section 1.51(a)(1); (2) applicant indicates that the application is being filed pursuant to this section and files a true copy of the prior complete application as filed including the specification (with claims), drawings, oath or declaration showing the signature or an indication it was signed, and any amendments referred to in the oath or declaration filed to complete the prior application; (3) the inventors named in the continuation or divisional application are the same or less than all the inventors named in the prior application; and (4) the application is filed before the patenting, or abandonment of, or termination of proceedings on the prior application. The copy of the prior application must be accompanied by a statement that the application papers filed are a true copy of the prior complete application. Such statement must be by the applicant or applicant's attorney or agent and must be a verified statement if made by a person not registered to practice before the Patent and Trademark Office. Only amendments reducing the number of claims or adding a reference to the prior application (Section 1.78(a)) will be entered before calculating the filing fee and granting the filing date. If the continuation or divisional application is filed by less than all the inventors named in the prior application, a statement must accompany the application when filed requesting deletion of the names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application. Except as provided in paragraph (d) of this section, if a true copy of the prior application as filed is not filed with the application or if the statement that the application papers are a true copy is omitted, the application will not be given a filing date earlier than the date upon which the copy and statement are filed, unless a petition with the fee set forth in Section 1.17(i) is filed which satisfactorily explains the delay in filing these items. (c) If an application filed pursuant to paragraph (b) of this section is incomplete for reasons other than those specified in paragraph (d) of this section, applicant will be notified and given a time period within which to complete the application in order to obtain a filing date as of the date of filing the omitted item provided the omitted item is filed before patenting or abandonment of or termination of proceedings on the prior application. If the omission is not corrected within the time period set, the application will be returned or otherwise disposed of; the fee, if submitted, will be refunded less the handling fee set forth in Section 1.21(n). (d) If an application filed pursuant to paragraph (b) of this section is otherwise complete, but does not include the appropriate filing fee or a true copy of the oath or declaration from the prior complete application, showing the signature or an indication it was signed, a filing date will be granted and applicant will be so notified and given a period of time within which to file the fee, or the true copy of the oath or declaration and to pay the surcharge as set forth in Section 1.16(e) in order to prevent abandonment of the application. The notification pursuant to this paragraph may be made simultaneously with any notification pursuant to paragraph(c) of this section. 37 CFR 1.60 PRACTICE The 37 CFR 1.60 practice was developed to provide a procedure for filing a continuation or divisional application where hardships existed in obtaining the signature of the inventor on such an application during the pendency of the prior nonprovisional application. It is suggested that the use of the 37 CFR 1.60 practice be limited to such instances in view of the additional work required by the Office to enter preliminary amendments. If no hardship exists in obtaining the signature of the inventor, the application should be filed under 37 CFR 1.53(b)(1) not under 37 CFR 1.60. It is pointed out that a continuation or divisional application may be filed under 37 CFR 1.53(b)(1), 37 CFR 1.60, or 37 CFR 1.62. 37 CFR 1.60 or 37 CFR 1.62 practice may not be used when filing an application where the immediate prior application was a provisional application under 35 U.S.C. 119(e). 37 CFR 1.60 practice permits persons having authority to prosecute a prior copending nonprovisional application to file a continuation or divisional application without requiring the inventor to again execute an oath or declaration under 35 U.S.C. 115, if the continuation or divisional application is an exact copy of the prior nonprovisional application as executed and filed. It is not necessary to file a new oath or declaration which includes a reference to the nonfiling of an application for an inventor's certificate in 37 CFR 1.60 applications filed after May 1, 1975. Likewise, it is not necessary to have the inventor sign a new oath or declaration merely to include a reference to the duty of disclosure if the parent application was filed prior to January 1, 1978, or to indicate that the inventor has reviewed and understands the contents of the application if the parent application was filed prior to October 1, 1983. Where the immediate prior nonprovisional application was not signed (for example, where it was filed under the former 37 CFR 1.147 or current 37 CFR 1.60 or 37 CFR 1.62 practice), a copy of the most recent nonprovisional application having a signed oath or declaration in the chain of copending prior nonprovisional applications under 35 U.S.C. 120 must be used. The basic concept of 37 CFR 1.60 practice is that since the inventor has already made the affirmation required by 35 U.S.C. 115, it is not necessary to make another affirmation in a later application that discloses and claims only the same subject matter. It is for this reason that a 37 CFR 1.60 application must be an exact duplicate of an earlier nonprovisional application executed by the inventor. It is permissible to retype pages to provide clean copies. 37 CFR 1.60 APPLICATION CONTENT As mentioned previously, a 37 CFR 1.60 application must consist of a copy of an executed nonprovisional application as filed (specification, claims, drawings, and oath or declaration). The application must also include a clear indication that a filing under 37 CFR 1.60 is desired. The use of transmittal form PTO/SB/13 is urged since it acts as a checklist for both applicant and the Office and includes a specific request for an application under 37 CFR 1.60. If an application is filed under 37 CFR 1.60, all requirements of that rule must be met. Although a copy of all original claims in the prior nonprovisional application must appear in the 37 CFR 1.60 application, some of the claims may be canceled by request in the 37 CFR 1.60 application in order to reduce the filing fee (see form PTO/SB/13, item 5). Any preliminary amendment presenting additional claims (claims not in the prior application as filed) should accompany the request for filing an application under 37 CFR 1.60, but such an amendment will not be entered until after the filing date has been granted. Any claims added by amendment should be numbered consecutively beginning with the number next following the highest numbered original claim in the prior executed nonprovisional application. The Office of Initial Patent Examination should not review preliminary amendments (in the transmitted letter or separate paper accompanying the application) for evidence of missing claims in applications filed under 37 CFR 1.60. Any errors in the numbering of claims in preliminary amendment(s) can be corrected in the examining groups. Amendments made in the prior nonprovisional application do not carry over into the 37 CFR 1.60 application. Any preliminary amendment should accompany the 37 CFR 1.60 application and be directed to "the accompanying 37 CFR 1.60 application" and not to the prior nonprovisional application. Applicants should submit preliminary amendments on filing or promptly thereafter to assure examiner consideration when the 37 CFR 1.60 application is picked up for examination. All application copies must comply with 37 CFR 1.52 and must be on paper which permits entry of amendments thereon in ink. A copy of the nonprovisional application must be prepared and submitted by the applicant, or his or her attorney or agent, and include a statement that it is a true copy. The copy of the oath or declaration need not show a copy of the inventor's or notary's signature provided that all other data is shown and an indication is made on the oath or declaration that the oath or declaration has been signed. For example, if the inventor's or notary's signature is not shown on the copy of the oath or declaration, the notation "/s/" may be added to the copy of the oath or declaration on the line provided for the signature to indicate that the original oath or declaration was signed. In order to obtain a filing date under 37 CFR 1.60 a copy of all pages of the application, including description, claims, any drawings, and the statement that the application papers are a true copy of the prior application are required to be submitted. If all these items are not submitted, remedy is by way of petition under 37 CFR 1.60(b) and payment of the fee under 37 CFR 1.17(i). Paragraph (d) of 37 CFR 1.60 which was added effective Jan. 4, 1993, provides for the filing fee and/or true copy of the oath or declaration from the prior nonprovisional application to be filed on a date later than the filing date with payment of the surcharge set forth in 37 CFR 1.16(e). Claims for priority rights under 35 U.S.C. 119(a)-(d) must be made in 37 CFR 1.60 applications if it is desired to have the foreign priority data appear on the issued patent. In re Van Esdonk, 187 USPQ 671 (Comm'r Pat. 1975). Reference should be made to certified copies filed in a prior application if reliance thereon is made. If the claims presented by amendment in a 37 CFR 1.60 application are directed to matter shown and described in the prior nonprovisional application but not substantially embraced in the statement of invention or claims originally presented, the applicant should file a supplemental oath or declaration under 37 CFR 1.67 as promptly as possible. In view of the fact that 37 CFR 1.60 applications are limited to continuations and divisions, no new matter may be introduced in a 37 CFR 1.60 application, 35 U.S.C. 132. Continuation-in-part applications may only be filed under 37 CFR 1.53(b)(1) or 37 CFR 1.62. A statement to the effect that the submitted copy is believed to be a true copy of the prior nonprovisional application as filed to the best of his or her information and belief is sufficient, if an explanation is made as to why the statement must be based only on belief. If the 37 CFR 1.60 application is being filed by less than all the inventors named in the prior nonprovisional application, a statement must accompany the application, when it is filed, requesting deletion of the names of the person or persons who are not inventors of the invention being claimed in the 37 CFR 1.60 application. For example, this situation could occur when a divisional application is being filed directed to one of the inventions disclosed and claimed in the prior nonprovisional application. No petition under 37 CFR 1.48 for correction of inventorship is required when filing under 37 CFR 1.60 unless there was an error in the omission of a named inventor in the prior nonprovisional application which was not corrected prior to the filing of the 37 CFR 1.60 application. If the inventorship shown on the original oath or declaration has been changed and approved during the prosecution of the prior nonprovisional application, the 37 CFR 1.60 application papers must indicate such a change has been made and approved by providing a copy of the petition for correction of inventorship under 37 CFR 1.48 in order that the changed inventorship may be indicated in the 37 CFR 1.60 application. The 37 CFR 1.60 application papers should also include any additions or changes in an inventor's citizenship, residence or post office address made and approved in the prior nonprovisional application. If small entity status has been established in a parent application, it is not necessary to again file a statement under 37 CFR 1.27 if the small entity status is desired in a 37 CFR 1.60 application. The 37 CFR 1.60 application must, however, include a reference to the statement in the parent application if the small entity, status is still proper and desired (37 CFR 1.28(a)). If the parent application was filed by other than the inventor under 37 CFR 1.47, a copy of all the petition papers filed under 37 CFR 1.47 must also be filed. FORMAL DRAWINGS REQUIRED Formal drawings are required in 37 CFR 1.60 applications as in other applications. A request to transfer drawings from a prior nonprovisional application does not relieve the applicant from the obligation to file a copy of the drawings originally filed in the prior nonprovisional application. If informal drawings are filed with the application papers, the examiner should use Form Paragraph 2.02 for formal drawing requirement. 2.02 Former 37 CFR 1.60, Drawing Requirement This application, filed under former 37 CFR 1.60, lacks formal drawings. The informal drawings filed in this application are acceptable for examination purposes. When the application is allowed, applicant will be required to submit new formal drawings. In unusual circumstances, the formal drawings from the abandoned parent application may be transferred by the grant of a petition under 37 CFR 1.182. Examiner Note: This form paragraph is to be used only when the parent application contains approved formal drawings and has been abandoned. Any drawing corrections requested but not made in the prior nonprovisional application should be repeated in the 37 CFR 1.60 application if such changes are still desired. Use Form Paragraph 2.04 for instructions to applicant where drawing corrections have been requested in the parent application. 2.04 Correction of Drawings in Former 37 CFR 1.60 Cases The drawings in this application are objected to by the Draftsperson as informal. Any drawing corrections requested, but not made in the prior application, should be repeated in this application if such changes are still desired. If the drawings were changed and approved during the prosecution of the prior application, a petition may be filed under 37 CFR 1.182 requesting the transfer of such drawings, provided the parent application has been abandoned. However, a copy of the drawings as originally filed must be included in the 37 CFR 1.60 application papers to indicate the original content. Examiner Note: Use form paragraphs 6.39 and 6.40 with this paragraph. COPIES OF AFFIDAVITS Affidavits and declarations, such as those under 37 CFR 1.131 and 37 CFR 1.132 filed during the prosecution of the prior nonprovisional application do not automatically become a part of the 37 CFR 1.60 application. Where it is desired to rely on an earlier filed affidavit, the applicant should make such remarks of record in the 37 CFR 1.60 application and include a copy of the original affidavit filed in the prior nonprovisional application. Use Form Paragraph 2.03 for instructions to applicant concerning affidavits and declarations in the parent application. 2.03 Affidavits or Declarations in Parent Application Applicant refers to an affidavit or declaration filed in the parent application. Affidavits or declarations, such as those submitted under 37 CFR 1.131 and 37 CFR 1.132, filed during the prosecution of the parent application do not automatically become a part of this application. Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make the remarks of record in the later application and include a copy of the original affidavit or declaration filed in the parent application. Examiner Note: This form paragraph is to be used in applications filed under 37 CFR 1.53(b) and former 37 CFR 1.60. Do not use this paragraph in applications filed under 37 CFR 1.53(d) and former 37 CFR 1.62 applications, since affidavits and/or declarations, such as those submitted under 37 CFR 1.131 and 37 CFR 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) and former 37 CFR 1.62 applications. ABANDONMENT OF THE PRIOR NONPROVISIONAL APPLICATION Under 37 CFR 1.60 practice the prior nonprovisional application is not automatically abandoned upon filing of the 37 CFR 1.60 application. If the prior nonprovisional application is to be expressly abandoned, such a paper must be signed in accordance with 37 CFR 1.138. A registered attorney or agent not of record acting in a representative capacity under 37 CFR 1.34(a) may also expressly abandon a prior nonprovisional application as of the filing date granted to a continuing application when filing such a continuing application. If the prior nonprovisional application which is to be expressly abandoned has a notice of allowance issued therein, the prior nonprovisional application can become abandoned by the nonpayment of the issue fee. However, once an issue fee has been paid in the prior application, even if the payment occurs following the filing of a continuation application under 37 CFR 1.60, a petition to withdraw the prior nonprovisional application from issue must be filed before the prior nonprovisional application can be abandoned (37 CFR 1.313). If the prior nonprovisional application which is to be expressly abandoned is before the Board of Patent Appeals and Interferences, a separate notice should be forwarded by the applicant to such Board, giving notice thereof. After a decision by the Court of Appeals for the Federal Circuit (CAFC) in which the rejection of all claims is affirmed, proceedings are terminated on the date of receipt of the Court's certified copy of the decision by the Patent and Trademark Office. Continental Can Company, Inc., v. Schuyler, 168 USPQ 625 (D.D.C. 1970). See MPEP Section 1216.01. EXAMINATION The practice relating to making first action rejections final applies also to 37 CFR 1.60 applications. See MPEP Section 706.07(b). Any preliminary amendment filed with a 37 CFR 1.60 application which is to be entered after granting of the filing date should be entered by the technical support staff of the examining group where the application is finally assigned to be examined. Any errors in the numbering of claims in preliminary amendment(s) can be corrected in the examining groups. Accordingly, these applications should be classified and assigned to the proper examining group by taking into consideration the claims that will be before the examiner upon entry of such a preliminary amendment. If the examiner finds that a filing date has been granted erroneously because the application was incomplete, e.g., pages of specification missing or drawing sheets missing, the application should be returned to the Office of Initial Patent Examination (OIPE) via the Office of Petitions. Form PTO/SB/13 is designed as an aid for use by both applicant and the Patent and Trademark Office and should simplify filing and processing of applications under 37 CFR 1.60. Form PTO/SB/13 Request For Filing A Patent Application Under 37 CFR 1.60.[GRAPHIC] [GRAPHIC] ---SECTION---201.06(b) Former 37 CFR 1.62 File Wrapper Continuing Procedure [Note: 37 CFR 1.62 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. A continuation or divisional application filed under former 37 CFR 1.62 on or after December 1, 1997, will be treated as an application filed under 37 CFR 1.53(d). If the application filed on or after December 1, 1997, under former 37 CFR 1.62 is a continuation-in-part (CIP) application, the application will be treated as an improper application. In which case, the applicant will be notified and given an opportunity to file a petition under 37 CFR 1.53(e) to have the application converted to an application filed under 37 CFR 1.53(b). A petition under 37 CFR 1.53(e) to accept and treat an improper application filed under former 37 CFR 1.62 as a proper application filed under 37 CFR 1.53(b) must include: (1) the $130.00 petition fee; (2) a true copy of the complete nonprovisional application, as filed, designated as the prior nonprovisional application in the application papers filed under former 37 CFR 1.62; (3) any amendments entered in the prior nonprovisional application; (4) any amendments submitted but not entered in the prior nonprovisional application and directed to be entered in the application papers filed under former 37 CFR 1.62; and (5) an executed oath or declaration under 37 CFR 1.63, if one has not already been submitted with the application papers filed under former 37 CFR 1.62. All continuation, divisional and CIP applications filed under former 37 CFR 1.62 prior to December 1, 1997, will continue to be processed and examined under the procedures set forth in former 37 CFR 1.62. Thus, the following discussion of former 37 CFR 1.62 practice is being retained in the MPEP and all references to the rules in this section are directed to the rules that were in effect prior to December 1, 1997.] 37 CFR 1.62 File wrapper continuing procedure (a) A continuation, continuation-in-part, or divisional application, which uses the specification, drawings and oath or declaration from a prior nonprovisional application which is complete as defined by Section 1.51(a)(1), and which is to be abandoned, may be filed under this section before the payment of the issue fee, abandonment of, or termination of proceedings on the prior application, or after payment of the issue fee if a petition under Section 1.313(b)(5) is granted in the prior application. The filing date of an application filed under this section is the date on which a request is filed for an application under this section including identification of the application number and the names of the inventors named in the prior complete application. If the continuation, continuation-in-part, or divisional application is filed by less than all the inventors named in the prior application a statement must accompany the application when filed requesting deletion of the names of the person or persons who are not inventors of the invention being claimed in the continuation, continuation-in-part, or divisional application. (b) The filing fee for a continuation, continuation-in-part, or divisional application under this section is based on the number of claims remaining in the application after entry of any preliminary amendment and entry of any amendments under Section 1.116 unentered in the prior application which applicant has requested to be entered in the continuing application. (c) In the case of a continuation-in-part application which adds and claims additional disclosure by amendment, an oath or declaration as required by Section 1.63 must also be filed. In those situations where a new oath or declaration is required due to additional subject matter being claimed, additional inventors may be named in the continuing application. In a continuation or divisional application which discloses and claims only subject matter disclosed in a prior application, no additional oath or declaration is required and the application must name as inventors the same or less than all the inventors named in the prior application. (d) If an application which has been accorded a filing date pursuant to paragraph (a) of this section does not include the appropriate basic filing fee pursuant to paragraph (b) of this section, or an oath or declaration by the applicant in the case of a continuation-in-part application pursuant to paragraph (c) of this section, applicant will be so notified and given a period of time within which to file the fee, oath, or declaration and to pay the surcharge as set forth in Section 1.16(e) in order to prevent abandonment of the application. The notification pursuant to this paragraph may be made simultaneously with any notification of a defect pursuant to paragraph (a) of this section. (e) An application filed under this section will utilize the file wrapper and contents of the prior application to constitute the new continuation, continuation-in-part, or divisional application but will be assigned a new application number. Changes to the prior application must be made in the form of an amendment to the prior application as it exists at the time of filing the application under this section. No copy of the prior application or new specification is required. The filing of such a copy or specification will be considered improper, and a filing date as of the date of deposit of the request for an application under this section will not be granted to the application unless a petition with the fee set forth in Section 1.17(i) is filed with instructions to cancel the copy or specification. (f) The filing of an application under this section will be construed to include a waiver of confidence by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to access to, or information concerning either the prior application or any continuing application filed under the provisions of this section may be given similar access to, or similar information concerning, the other application(s) in the file wrapper. (g) The filing of a request for a continuing application under this section will be considered to be a request to expressly abandon the prior application as of the filing date granted the continuing application. (h) The applicant is urged to furnish the following information relating to the prior and continuing applications to the best of his or her ability: (1) Title as originally filed and as last amended; (2) Name of applicant as originally filed and as last amended; (3) Current correspondence address of applicant; (4) Identification of prior foreign application and any priority claim under 35 U.S.C. 119. (5) The title of the invention and names of the applicants to be named in the continuing application. (i) Envelopes containing only application papers and fees for filing under this section should be marked "Box FWC". (j) If any application filed under this section is found to be improper, the applicant will be notified and given a time period within which to correct the filing error in order to obtain a filing date as of the date the filing error is corrected provided the correction is made before the payment of the issue fee, abandonment of, or termination of proceedings on the prior application. If the filing error is not corrected within the time period set, the application will be returned or otherwise disposed of; the fee, if submitted, will be refunded less the handling fee set forth in Section 1.21(n). An applicant may file a continuation or division of a pending patent application by simply filing a request therefor under 37 CFR 1.62 identifying the Application No. (series code and serial number) of the prior complete nonprovisional application and paying the necessary application filing fee. The filing of a copy of the prior nonprovisional application (required under 37 CFR 1.60) is unnecessary and improper under the procedure set forth in 37 CFR 1.62. To file a continuation-in-part application, an amendment (not a new specification) adding the additional subject matter and an oath or declaration relating thereto are also required. A request for an FWC application under 37 CFR 1.62 may be signed by a registered practitioner acting in a representative capacity under 37 CFR 1.34(a). However, correspondence concerning the continuing application will be sent by the Office to the correspondence address as it appears on the prior nonprovisional application until a new power of attorney, or change of correspondence address signed by an attorney or agent of record in the prior application, is filed in the FWC. The "file wrapper continuing" (FWC) procedure is set forth in 37 CFR 1.62. Under this simplified procedure, any continuing application such as a continuation, continuation-in-part, or divisional application may be filed. The papers in the copending prior nonprovisional application, which application will become automatically expressly abandoned will be used and any changes thereto desired when filing the FWC application must be made by amendment. Under the FWC procedure, a new application number is assigned and the specification, drawings, and other papers in the parent application file wrapper are used as the papers in the continuing application. Changes in inventorship may be made. The "file wrapper continuing" (FWC) procedure is available for utility, design, plant, and reissue applications to file continuing applications of the same type (utility, design, plant, reissue) as the parent application. An application which claims the benefits of a provisional application may not be filed under the provisions of 37 CFR 1.62. Use of the FWC procedure will automatically result in express abandonment of the prior nonprovisional application as of the filing date accorded the continuation, continuation-in-part, or divisional application. The FWC procedure can be used for any continuation, continuation-in-part, or divisional application provided the applicant wishes the copending prior nonprovisional application to become abandoned. If a continuation or divisional application is desired without abandonment of the parent application, the procedure under 37 CFR 1.60 should be used. Applicant also has the option of filing new application papers with a reexecuted oath or declaration under 37 CFR 1.53(b)(1). Under 37 CFR 1.62, the specification, claims, and drawings, and any amendments in the prior nonprovisional application are used in the continuation, continuation-in-part, or divisional application. A new filing fee is required in accordance with 35 U.S.C. 41 and 37 CFR 1.16. The only other statutory requirement under 35 U.S.C. 111(a) is a signed oath or declaration. Since a continuation or divisional application cannot contain new matter, the oath or declaration filed in the prior nonprovisional application would supply all the information required under the statute and rules to have a complete application and to obtain a filing date. Accordingly, the previously filed oath or declaration will be considered to be the oath or declaration of the 37 CFR 1.62 continuation or division. However, if a continuation-in-part application is being filed, or a correction of inventorship is being made, then a new oath or declaration must be signed and filed by the applicant. The original disclosure of an application filed under 37 CFR 1.62 will be the original parent application, amendments entered in the parent application, and amendments filed on the filing date and referred to in the oath or declaration by the inventor(s). However, the filing fee will be based on the claims in the 37 CFR 1.62 application after entry of any unentered amendments under 37 CFR 1.116 in the prior application whose entry has been requested by the applicant and any preliminary amendment which may accompany the FWC request and filing fee. The Certificate of Mailing Procedure under 37 CFR 1.8 does not apply to filing a request for a "File Wrapper Continuing" application since the filing of such a request is considered to be a filing of national application papers for the purpose of obtaining an application filing date (37 CFR 1.8(a)(i)). The applicant may file a signed FWC request and the regular filing fee under 37 CFR 1.16 and other necessary papers with the Patent and Trademark Office, either by mail addressed to "Box FWC" or in person with the Customer Service Center. An individual check or deposit account authorization should accompany each FWC application, since combined checks delay processing. The Mail Center sorts out all "Box FWC" envelopes upon receipt and delivers them to a reader for prompt special handling. The reader applies the "Mail Room" date stamp and marks the categories of the fees. The papers for each FWC application are assigned a regular national application number and placed in a "Jumbo" size file wrapper. The Special Handling Branch reviews the FWC request for accuracy and completeness and assigns the filing date if everything appears to be in order. There is no need for any processing of the FWC application by the Initial Patent Examination Division of the Office of Initial Patent Examination (OIPE) since there are no papers to be examined and the FWC application is routed to the group assigned the prior nonprovisional application. When the FWC application file wrapper is received in the examining group, the parent application is promptly obtained and processed by a technical support staff member. All of the correspondence from the Office in a FWC application refers to the FWC application number and filing date and is processed in the same manner as any other continuation, continuation-in-part or divisional application. The first action final rejection procedures set forth in MPEP Section 706.07(b) apply to FWC applications filed under 37 CFR 1.62. The PALM system can supply information to authorized persons as to the location of the parent application file wrapper and ties the parent application number to the FWC application number. The provisions of 37 CFR 1.62 provide that if any application in the file wrapper is available to the public that all applications in the file wrapper will be available to the public. Paragraph (a) of 37 CFR 1.62 sets forth the minimum requirements for obtaining a filing date. Paragraphs (b) and (c) of 37 CFR 1.62 set forth the filing fee and oath or declaration requirements. Paragraph 1.62(d) relates to later filing of the filing fee or oath or declaration as provided for in 35 U.S.C. 111(a). EXTENSIONS OF TIME If an extension of time is necessary to establish continuity between the prior application and the FWC application, the petition for extension of time must be filed as a separate paper directed to the prior nonprovisional application. A general authorization to charge fees to a deposit account filed in the FWC application will not be construed as a petition for extension of time in the prior application. See In re Kokaji, 2 USPQ2d 1309 (Comm'r Pat. 1987). Any petition for extension of time directed to the prior application must be accompanied by its own certificate of mailing under 37 CFR 1.8 (if mailed by first class mail (including "Priority Mail" and "Express Mail"); see MPEP Section 512) or should have the "Express Mail" mailing label number in accordance with 37 CFR 1.10 (if mailed by "Express Mail"; see MPEP Section 513), if the benefits of those rules are desired. For the purposes of 37 CFR 1.8(a)(1)(i)(A), first class mail is interpreted as including "Express Mail" and "Priority Mail" deposited with the USPS. CERTIFIED COPY A certified copy of a continuation-in-part application filed under 37 CFR 1.62 will be prepared by the Certification Branch upon request. The certified copy will consist of a copy of the prior complete application as filed, all amendments entered in the prior application as of the FWC filing date, any amendment filed with the request for a continuation-in-part application under 37 CFR 1.62, any unentered amendment under 37 CFR 1.116 in the prior application whose entry was requested by the applicant in the FWC application, and the oath or declaration under 37 CFR 1.63 filed to complete the FWC application. SMALL ENTITY STATUS If small entity status was established in the parent application of an application filed under 37 CFR 1.62, and such status is desired and proper in a 37 CFR 1.62 application, it is not necessary that a new statement under 37 CFR 1.27 be filed but rather reference may be made to the statement filed in the parent application. PRIORITY CLAIM Claims under 35 U.S.C. 119(a)-(d) and 120 for the benefit of the filing dates of earlier applications in a parent application will automatically carry over to an application filed under 37 CFR 1.62. Applicants are encouraged to repeat and update such claims at the time of filing a 37 CFR 1.62 application so that such claims will not be overlooked. A member of the technical support staff should check if priority data has been entered on the file wrapper. Form Paragraph 2.28 may be used to remind applicant to insert parent application data. 2.28 Reference in Former 37 CFR 1.62 Continuing Applications This application filed under former 37 CFR 1.62 lacks the necessary reference to the prior application. A statement reading "This is a [1] of Application No. [2], filed [3]." should be entered following the title of the invention or as the first sentence of the specification. Also, the current status of the nonprovisional parent application(s) should be included. Examiner Note: 1. In bracket 1, insert --division--, --continuation--, or --continuation-in-part--. 2. Use only in "file wrapper continuing" applications under former 37 CFR 1.62. Form PTO/SB/14 is designed as an aid for use by applicant for filing an application under 37 CFR 1.62. Form PTO/SB/14. Request Form for Filing a Patent Application under 37 CFR 1.62.[GRAPHIC] [GRAPHIC] ---SECTION---201.06(c) 37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure 37 CFR 1.53 Application number, filing date, and completion of application. +++ (b) Application filing requirements - Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to Section 1.71 and at least one claim pursuant to Section 1.75, and any drawing required by Section 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and Section 1.78(a). (1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section. (2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph. +++ 37 CFR 1.63 Oath or Declaration. +++ (d)(1) A newly executed oath or declaration is not required under Section 1.51(b)(2) and Section 1.53(f) in a continuation or divisional application, provided that: (i) The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section; (ii) The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application; (iii) The specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application; and (iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application. (2) The copy of the executed oath or declaration submitted under this paragraph for a continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors in the continuation or divisional application. (3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under Section 1.47, the copy of the executed oath or declaration for such prior application must be accompanied by: (i) A copy of the decision granting a petition to accord Section 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under Section 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c); and (ii) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application. (4) Where the power of attorney (or authorization of agent) or correspondence address was changed during the prosecution of the prior application, the change in power of attorney (or authorization of agent) or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney (or authorization of agent) or correspondence address during the prosecution of the prior application. (5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application. +++ IN GENERAL 37 CFR 1.53(b) is the section under which all applications are filed EXCEPT: (1) an application resulting from entry of an international application into the national stage under 35 U.S.C. 371 and 37 CFR 1.494 or 37 CFR 1.495; (2) a provisional application under 35 U.S.C. 111(b) and 37 CFR 1.53(c); or (3) a continued prosecution application (CPA) under 37 CFR 1.53(d). Applications submitted under 37 CFR 1.53(b), as well as CPAs submitted under 37 CFR 1.53(d), are applications filed under 35 U.S.C. 111(a). An application filed under 37 CFR 1.53(b) may be an original, a continuation, a divisional, a continuation-in-part, or a substitute. (See MPEP Section 201.09 for substitute application.) The application may be for a "utility" patent under 35 U.S.C. 101, a design patent under 35 U.S.C. 171, a plant patent under 35 U.S.C. 161, or a reissue under 35 U.S.C. 251. 37 CFR 1.53(b) is the "default" application. An application that is not (1) the result of the entry of an international application into the national stage after compliance with 35 U.S.C. 371 and 37 CFR 1.494 or 37 CFR 1.495, (2) a provisional application under 37 CFR 1.53(c), or (3) a CPA under 37 CFR 1.53(d), is an application filed under 37 CFR 1.53(b). An application will be treated as one filed under 37 CFR 1.53(b) unless otherwise designated. In order to be complete for filing date purposes, all applications filed under 37 CFR 1.53(b) must include a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to 37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any drawing required by 37 CFR 1.81(a). The statutory filing fee and an oath or declaration in compliance with 37 CFR 1.63 (and 37 CFR 1.175 (if a reissue) or 37 CFR 1.162 (if for a plant patent)) are also required by 37 CFR 1.51(b) for a complete application, but the filing fee and oath or declaration may be filed after the application filing date upon payment of the surcharge set forth in 37 CFR 1.16(e). See 37 CFR 1.53(f). Any application filed on or after December 1, 1997, which is identified by the applicant as an application filed under 37 CFR 1.60 will be processed as an application under 37 CFR 1.53(b) (using the copy of the specification, drawings and signed oath/declaration filed in the prior application supplied by the applicant). Any submission of an application including or relying on a copy of an oath or declaration that would have been proper under 37 CFR 1.60 will be a proper filing under 37 CFR 1.53(b). A new application containing a copy of an oath or declaration under 37 CFR 1.63 referring to an attached specification is indistinguishable from a continuation or divisional application containing a copy of an oath or declaration from a prior application submitted pursuant to 37 CFR 1.63(d). Unless an application is submitted with a statement that the application is a continuation or divisional application, see 37 CFR 1.78(a)(2), the Office will process the application as a new non-continuing application. Applicants are advised to clearly designate any continuation, divisional, or continuation-in-part application as such to avoid the issuance of a filing receipt that does not indicate that the application is a continuation, divisional, or continuation-in-part. OATH/DECLARATION 37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a continuation or divisional application filed by all or by fewer than all of the inventors named in a prior nonprovisional application containing a signed oath or declaration as required by 37 CFR 1.63, provided that a copy of the signed oath or declaration filed in the prior application is submitted for the continuation or divisional application and the specification and drawings filed in the continuation or divisional application do not contain any subject matter that would have been new matter in the prior application. The copy of the oath or declaration must show the signature of the inventor(s) or contain an indication thereon that the oath or declaration was signed (e.g., the notation "/s/" on the line provided for the signature). It is not necessary to have the inventor sign a new oath or declaration merely to include a reference to the duty of disclosure if the parent application was filed prior to January 1, 1978, to indicate that the inventor has reviewed and understands the contents of the application if the parent application was filed prior to October 1, 1983, or to indicate the inventor's post office address if the parent application was filed prior to December 1, 1997, and the inventor's post office address is identified elsewhere in the application. When a copy of an oath or declaration from a prior application is filed in a continuation or divisional application under 37 CFR 1.53(b), special care should be taken by the applicant to ensure that the copy is matched with the correct application file. Applicant should file the copy of the oath or declaration with a cover letter explaining that the copy of the oath or declaration is for the attached application or for a previously-filed 37 CFR 1.53(b) application (identified by application number which consists of a two-digit series code, e.g ., 08/, and a six-digit serial number, e.g., 123,456). An adhesive label may be attached to the front of the copy of the oath or declaration. The label should clearly state that the copy of the oath or declaration is intended for the attached application submitted therewith or for Application No. XX/YYY,YYY. During initial processing, attachments (e.g., a cover letter) to application papers may be separated. Therefore, applicant should not rely solely upon a cover letter. Note: 37 CFR 1.5(a) states that no correspondence relating to an application should be filed prior to receipt of the application number information from the Patent and Trademark Office. 37 CFR 1.63(d) requires a copy of the signed oath or declaration from the prior application. In instances in which the oath or declaration filed in the prior application is itself a copy of an oath or declaration from a prior application, either a copy of the copy of the oath or declaration in the prior application or a direct copy of the original oath or declaration is acceptable, as both are a copy of the oath or declaration in the prior application, see 37 CFR 1.4(d)(1)(ii). The patent statute and rules of practice do not require that an oath or declaration include a date of execution, and no objection should be made to an oath or declaration because it lacks either a recent date of execution or any date of execution. The applicant's duty of candor and good faith including compliance with the duty of disclosure requirements of 37 CFR 1.56 is continuous and applies to the continuing application. A newly executed oath or declaration is required in a continuation or divisional application filed under 37 CFR 1.53(b) naming an inventor not named in the prior application, and in a continuation-in-part application. SPECIFICATION AND DRAWINGS A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (1) a copy of the prior application, including a copy of the signed oath or declaration in such prior application, as filed; (2) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (3) a new specification and drawings and a newly executed oath or declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application. If a continuation or divisional application filed with a newly executed oath or declaration contains subject matter that would have been new matter in the prior application, the application will have to be amended to indicate that it is a continuation-in-part application rather than a continuation or a divisional application. The specification and drawings of a continuation or divisional application filed under 37 CFR 1.53(b) are not limited to a reproduction or "true copy" of the prior application, i.e., the applicant may revise the specification for clarity or contextual purposes vis-à-vis the specification originally filed in the prior application in the manner that an applicant may file a substitute specification, see 37 CFR 1.125, or amend the drawings of an application so long as it does not result in the introduction of new matter. It is the applicant's responsibility to review any new specification or drawings submitted for a continuation or divisional application under 37 CFR 1.53(b) and 37 CFR 1.63(d) to determine that it contains no new matter. An applicant is advised to simply file a continuing application with a newly executed oath or declaration when it is questionable as to whether the continuing application adds material that would have been new matter if presented in the prior application. If one or more claims are allowed in the continuation or divisional application which are directed to matter shown and described in the prior nonprovisional application but not claimed in the prior application, the applicant should be required to file a supplemental oath or declaration under 37 CFR 1.67. If the examiner determines that new matter is present relative to the prior application, the examiner should notify the applicant in an Office action (preferably the first Office action) that a new oath/declaration along with a surcharge is required and that the application should be redesignated as a continuation-in-part. Since the specification and drawings of a continuation or divisional application filed under 37 CFR 1.53(b) are not limited to a reproduction or "true copy" of the prior application, the safeguard in former 37 CFR 1.60(b) concerning the filing of an application lacking all of the pages of the specification or sheets of drawings of the prior application has not been retained in 37 CFR 1.53(b). Nevertheless, an applicant may incorporate by reference the prior application by including, in the application-as-filed, a statement that such specifically enumerated prior application or applications are "hereby incorporated herein by reference." The statement may appear in the specification or in the application transmittal letter. The inclusion of this incorporation by reference of the prior application(s) will permit an applicant to amend the continuing application to include any subject matter in such prior application(s), without the need for a petition. INVENTORSHIP To continue the practice in former 37 CFR 1.60(b)(4) of permitting the filing of a continuation or divisional application by all or by fewer than all of the inventors named in a prior application without a newly executed oath or declaration, 37 CFR 1.63(d)(2) provides that the copy of the oath or declaration submitted for a continuation or divisional application under 1.53(b) and 37 CFR 1.63(d) must be accompanied by a statement from applicant, applicant's representative or other authorized party requesting the deletion of the names of the person or persons who are not inventors in the continuation or divisional application. Where the continuation or divisional application and a copy of the oath or declaration from the prior application are filed without a statement from an authorized party requesting deletion of the names of any person or persons named in the prior application, the continuation or divisional application will be treated as naming as inventors the person or persons named in the copy of the executed oath or declaration from the prior application. Accordingly, if a petition under 37 CFR 1.48(a) or (c) was granted in the prior application, the oath or declaration filed in a continuation or divisional application pursuant to 37 CFR 1.53(b) and 37 CFR 1.63(d) should be a copy of the oath or declaration executed by the added inventor(s) filed in the prior application. The statement requesting the deletion of the names of the person or persons who are not inventors in the continuation or divisional application must be signed by person(s) authorized pursuant to 37 CFR 1.33(b) to sign an amendment in the continuation or divisional application. A newly signed oath or declaration in compliance with 37 CFR 1.63 is required where an inventor who was not named as an inventor in the signed oath or declaration filed in the prior application is to be named in a continuation or divisional application filed under 37 CFR 1.53(b). The newly signed oath or declaration must be signed by all the inventors. RULE 47 ISSUES 37 CFR 1.63(d)(3) provides for the situation in which the executed oath or declaration, of which a copy is submitted for a continuation or divisional application, was originally filed in a prior application accorded status under 37 CFR 1.47. 37 CFR 1.63(d)(3)(i) requires a copy of any decision granting a petition to accord 37 CFR 1.47 status to such application, unless all nonsigning inventor(s) or legal representative (pursuant to 37 CFR 1.42 or 1.43) have filed an oath or declaration to join in an application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121 or 365(c). Where one or more, but not all, nonsigning inventor or legal representative (pursuant to 37 CFR 1.42 or 1.43) subsequently joins in any application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121 or 365(c), 37 CFR 1.63(d)(3)(ii) also requires a copy of any oath or declaration filed by the inventor or legal representative who subsequently joined in such application. New continuation or divisional applications filed under 37 CFR 1.53(b) which contain a copy of an oath or declaration that is not signed by one of the inventors and a copy of the decision according 37 CFR 1.47 status in the prior application, should be given a "Rule 47" designation on the file wrapper and forwarded by the Office of Initial Patent Examination (OIPE) to the Office of Petitions before being forwarded to the patent examining groups. The Office of Petitions will inform the nonsigning inventor of the filing of the continuation or divisional application and will publish an announcement in the Official Gazette. CHANGE OF ATTORNEY/CORRESPONDENCE ADDRESS 37 CFR 1.63(d)(4) provides that where the power of attorney (or authorization of agent) or correspondence address was changed during the prosecution of the prior application, the change in power of attorney (or authorization of agent) or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney (or authorization of agent) or correspondence address which occurred during the prosecution of the prior application. SMALL ENTITY STATUS If small entity status has been established in a parent application and is still proper and desired in a continuation or divisional application filed under 37 CFR 1.53(b), it is not necessary to file a new statement under 37 CFR 1.27. However, the 37 CFR 1.53(b) application must include either (a) a reference to the statement filed in the prior application or patent to be reissued (payment of the small entity basic statutory filing fee will be treated as such a reference), or (b) a copy of the statement filed in the prior application or in the patent to be reissued. See 37 CFR 1.28(a)(2). COPIES OF AFFIDAVITS Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the prior nonprovisional application do not automatically become a part of a continuation or divisional application filed under 37 CFR 1.53(b). Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make such remarks of record in the 37 CFR 1.53(b) application and include a copy of the original affidavit or declaration filed in the prior nonprovisional application. Use Form Paragraph 2.03 for instructions to applicant concerning affidavits or declarations filed in the parent application. 2.03 Affidavits or Declarations in Parent Application Applicant refers to an affidavit or declaration filed in the parent application. Affidavits or declarations, such as those submitted under 37 CFR 1.131 and 37 CFR 1.132, filed during the prosecution of the parent application do not automatically become a part of this application. Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make the remarks of record in the later application and include a copy of the original affidavit or declaration filed in the parent application. Examiner Note: This form paragraph is to be used in applications filed under 37 CFR 1.53(b) and former 37 CFR 1.60. Do not use this paragraph in applications filed under 37 CFR 1.53(d) and former 37 CFR 1.62 applications, since affidavits and/or declarations, such as those submitted under 37 CFR 1.131 and 37 CFR 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) and former 37 CFR 1.62 applications. EXTENSIONS OF TIME If an extension of time is necessary to establish continuity between the prior application and the continuing application filed under 37 CFR 1.53(b), the petition for an extension of time must be filed as a separate paper directed to the prior nonprovisional application. Under 37 CFR 1.136(a)(3), an authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time for its timely submission. A continuing application filed under 37 CFR 1.53(b) is a new application which is assigned a new application number and filing date and is placed in a new file wrapper maintained separately from the file of the prior application. The filing of a continuing application is not a paper directed or placed in the file of the prior application and is not a "reply" to the last Office action in the prior application. Thus, a petition for an extension of time and the fee set forth in 37 CFR 1.17 are required to be filed as a separate paper in the prior application. Any petition for an extension of time directed to the prior application must be accompanied by its own certificate of mailing under 37 CFR 1.8 (if mailed by first class mail) or under 37 CFR 1.10 (if mailed by Express Mail), if the benefits of those rules are desired. ABANDONMENT OF THE PRIOR NONPROVISIONAL APPLICATION Under 37 CFR 1.53(b) and 37 CFR 1.63(d) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application. If the prior nonprovisional application is to be expressly abandoned, such a paper must be signed in accordance with 37 CFR 1.138. A registered attorney or agent not of record acting in a representative capacity under 37 CFR 1.34(a) may also expressly abandon a prior nonprovisional application as of the filing date granted to a continuing application when filing such a continuing application. If the prior nonprovisional application which is to be expressly abandoned has a notice of allowance issued therein, the prior nonprovisional application can become abandoned by the nonpayment of the issue fee. However, once an issue fee has been paid in the prior application, even if the payment occurs following the filing of a continuing application under 37 CFR 1.53(b) and 37 CFR 1.63(d), a petition to withdraw the prior nonprovisional application from issue must be filed before the prior nonprovisional application can be abandoned (37 CFR 1.313). If the prior nonprovisional application which is to be expressly abandoned is before the Board of Patent Appeals and Interferences, a separate notice should be forwarded by the appellant to the Board, giving them notice thereof. After a decision by the Court of Appeals for the Federal Circuit (CAFC) in which the rejection of all claims is affirmed, proceedings are terminated on the date of receipt of the Court's certified copy of the decision by the Patent and Trademark Office. Continental Can Company, Inc. v. Schuyler, 326 F. Supp. 283, 168 USPQ 625 (D.D.C. 1970). See MPEP Section 1216.01. EXAMINATION The practice relating to making first action rejections final also applies to continuation and divisional applications filed under 37 CFR 1.53(b) and 37 CFR 1.63(d). See MPEP Section 706.07(b). Any preliminary amendment filed with a 37 CFR 1.53(b) application which is to be entered after granting of the filing date should be entered by the technical support personnel of the patent examining group where the application is finally assigned to be examined. Any errors in the numbering of claims in preliminary amendment(s) can be corrected in the patent examining groups. Accordingly, these applications should be classified and assigned to the proper patent examining group by taking into consideration the claims that will be before the examiner upon entry of such a preliminary amendment. If the examiner finds that pages of the specification or drawings figures described in the specification are missing and the application is a continuation or divisional application filed under 37 CFR 1.53(b) using a copy of the oath or declaration filed in the prior application under 37 CFR 1.63(d), the examiner must check to determine whether the continuation or divisional application, as originally filed, includes a statement incorporating by reference the prior application(s). The statement may appear in the specification or in the application transmittal letter. The inclusion of this incorporation by reference of the prior application(s) will permit applicant to amend the continuation or divisional application to include any subject matter in the prior application(s) without the need for a petition. If the continuation or divisional application filed under 37 CFR 1.53(b) and 37 CFR 1.63(d) does not include the incorporation by reference statement in the application papers as originally filed and applicant has not been informed of the omitted items, the application should be returned to OIPE for mailing of a "Notice of Omitted Item(s)." ---SECTION---201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice 37 CFR 1.53 Application number, filing date, and completion of application. +++ (d) Application filing requirements - Continued prosecution (nonprovisional) application. (1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that: (i) The prior nonprovisional application is either: (A) Complete as defined by Section 1.51(b); or (B) The national stage of an international application in compliance with 35 U.S.C. 371; and (ii) The application under this paragraph is filed before the earliest of: (A) Payment of the issue fee on the prior application, unless a petition under Section 1.313(b)(5) is granted in the prior application; (B) Abandonment of the prior application; or (C) Termination of proceedings on the prior application. (2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph: (i) Must identify the prior application; (ii) Discloses and claims only subject matter disclosed in the prior application; (iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section; (iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and (v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph. (3) The filing fee for a continued prosecution application filed under this paragraph is: (i) The basic filing fee as set forth in Section 1.16; and (ii) Any additional Section 1.16 fee due based on the number of claims remaining in the application after entry of any amendment accompanying the request for an application under this paragraph and entry of any amendments under Section 1.116 unentered in the prior application which applicant has requested to be entered in the continued prosecution application. (4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of a petition under Section 1.48. (5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with Section 1.125. (6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of Section 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket. (7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application. (8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability: (i) Title of invention; (ii) Name of applicant(s); and (iii) Correspondence address. (9) Envelopes containing only requests and fees for filing an application under this paragraph should be marked "Box CPA." Requests for an application under this paragraph filed by facsimile transmission should be clearly marked "Box CPA." +++ IN GENERAL In addition to the provisions of 37 CFR 1.53(b), a continuation or divisional (but not a continuation-in-part) application may be filed under 37 CFR 1.53(d). A continuation or divisional application filed under 37 CFR 1.53(d) is called a "Continued Prosecution Application" or "CPA." A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b). In addition, the Office will not issue a new filing receipt for a CPA. See 37 CFR 1.54(b). By not issuing a filing receipt for a CPA, the Office will be able to perform the pre-examination processing of any CPA in the patent examining group to which the prior application was assigned. A CPA may also be filed by facsimile transmission or by hand-delivery directly to the patent examining group to which the prior application was assigned. The use of these techniques for filing a CPA will avoid the delay inherent in routing a new application from the Office of Initial Patent Examination (OIPE) to the appropriate patent examining group. As a result, the time delay between the filing date and the first Office action should be less for a CPA than for an application filed under 37 CFR 1.53(b). A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA. See 37 CFR 1.53(d)(2)(v). Therefore, where the prior application is not to be abandoned, any continuation or divisional application must be filed under 37 CFR 1.53(b). The CPA procedure set forth in 37 CFR 1.53(d) is available for "utility," design, plant, and reissue applications when filing either a continuation or divisional application of the same type ("utility," design, plant, reissue) as the prior nonprovisional application. Since no new matter may be introduced in a CPA, the procedure set forth in 37 CFR 1.53(d) is not available for filing a continuation-in-part application. All continuation-in-part applications must be filed under 37 CFR 1.53(b) and a newly executed oath or declaration is required. Under the CPA procedure, the continuation or divisional application will utilize the file wrapper and contents of the prior nonprovisional application, including the specification, drawings and oath or declaration from the prior nonprovisional application, and will be assigned the same application number as the prior nonprovisional application. No filing receipt will be mailed by the Patent and Trademark Office for the CPA. Any changes to the continuation or divisional application desired when filing the CPA must be made in the form of an amendment to the prior application as it existed prior to filing the CPA, see 37 CFR 1.53(d)(5). Any new specification filed with the CPA request will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with 37 CFR 1.125. However, the applicant must comply with the requirements of 37 CFR 1.125(b) before the substitute specification will be entered into the CPA. A CPA may be based on a prior CPA so long as the prior CPA is complete under 37 CFR 1.51(b). There is no limit to the number of CPAs that may be filed in a chain of continuing applications. However, only one CPA may be pending at one time based on the same prior nonprovisional application. Under 37 CFR 1.53(d), the specification, claims, and drawings, and any amendments entered in the prior nonprovisional application are used in the CPA. A new filing fee is required in accordance with 35 U.S.C. 41 and 37 CFR 1.16. The only other statutory requirement under 35 U.S.C. 111(a) is a signed oath or declaration. Since a CPA cannot contain new matter, the oath or declaration filed in the prior nonprovisional application would supply all the information required under the statute and rules to have a complete application and to obtain a filing date. Accordingly, the previously filed oath or declaration will be considered to be the oath or declaration of the CPA. The original disclosure of a CPA is the same as the original disclosure of the parent non-continued prosecution application and amendments entered in the parent application(s). However, any subject matter added by amendment in the parent application which is deemed to be new matter in the parent application will also be considered new matter in the CPA. No amendment filed in a CPA, even if filed on the filing date of the CPA, may include new matter. Envelopes containing only requests and fees for filing a CPA should be marked "Box CPA" and requests for a CPA filed by facsimile transmission should be clearly marked "Box CPA." See 37 CFR 1.53(d)(9). If application papers are in any way designated as a CPA filing under 37 CFR 1.53(d) (e.g., contain a reference to 37 CFR 1.53(d), CPA, or continued prosecution application), the application papers will be treated by the Office as a CPA filed under 37 CFR 1.53(d), even if the application papers also contain other inconsistent designations (e.g., if the papers are also designated as an application filed under 37 CFR 1.53(b)). CONDITIONS FOR FILING A CPA A continuation or divisional application may be filed under 37 CFR 1.53(d), if the prior nonprovisional application is either: (1) complete as defined by 37 CFR 1.51(b); or (2) the national stage of an international application in compliance with 35 U.S.C. 371. The term "prior nonprovisional application" in 37 CFR 1.53(d)(1) means the nonprovisional application immediately prior to the CPA. A complete application as defined by 37 CFR 1.51(b) and a "national stage of an international application in compliance with 35 U.S.C. 371" must each contain, inter alia, the appropriate filing fee and a signed oath or declaration under 37 CFR 1.63. In addition, a continuation or divisional application filed under 37 CFR 1.53(d) must be filed before the earliest of: (1) payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(b)(5) is granted in the prior application; (2) abandonment of the prior application; or (3) termination of proceedings on the prior application. INITIAL PROCESSING A CPA request will be initially processed by the patent examining group assigned the prior application. The patent examining group will verify that (1) the prior application is a nonprovisional application, (2) the correct application number of the prior nonprovisional application is identified in the request, (3) the request is properly signed, (4) the prior nonprovisional application was pending on, and that the issue fee has not been paid in the prior nonprovisional application on or prior to, the filing date of the CPA request, (5) the prior nonprovisional application was complete under 37 CFR 1.51(b) (e.g., the filing fee has been paid and a signed oath or declaration under 37 CFR 1.63 has been filed in the prior application), and (6) the proper filing fee has been paid in the CPA. If one or more conditions for filing a CPA have not been satisfied or the proper filing fee has not been paid, the applicant will be so notified and no examination will be made in the CPA until the filing error has been corrected or the proper filing fee submitted. See 37 CFR 1.53(h). If an examiner discovers that an improper or incomplete CPA has been forwarded to the examiner in error, the application should be immediately returned to a supervisory applications examiner (SAE) within the patent examining group. The improper or incomplete CPA is not to be returned to OIPE. INCORRECT PARENT APPLICATION NUMBER IDENTIFIED A request for a CPA must identify the prior nonprovisional application (37 CFR 1.53(d)(2)(i)) by application number (series code and serial number) or by serial number and filing date. Where a paper requesting a CPA is filed which does not properly identify the prior nonprovisional application number, the patent examining group should attempt to identify the proper application number by reference to other identifying information provided in the CPA papers, e.g., name of the inventor, filing date, title of the invention, and attorney's docket number of the prior application. If the patent examining group is able to identify the correct application number of the prior application, the correct application number should be entered in red ink on the paper requesting the CPA and the entry should be dated and initialed. If the patent examining group is unable to identify the application number of the prior application and the party submitting the CPA papers is a registered practitioner, the practitioner may be requested by telephone to supply a letter signed by the practitioner providing the correct application number. If all attempts to obtain the correct application number are unsuccessful, the paper requesting the CPA should be returned by the patent examining group to the sender where a return address is available. The returned CPA request must be accompanied by a cover letter which will indicate to the sender that if the returned CPA request is resubmitted to the Patent and Trademark Office with the correct application number within two weeks of the mail date on the cover letter, the original date of receipt of the CPA request will be considered by the Patent and Trademark Office as the date of receipt of the CPA request. See 37 CFR 1.5(a). A copy of the returned CPA request and a copy of the date-stamped cover letter should be retained by the patent examining group. Applicants may use either the Certificate of Mailing or Transmission procedure under 37 CFR 1.8 or the "Express Mail" procedure under 37 CFR 1.10 for resubmissions of returned CPA requests if they desire to have the benefit of the date of deposit in the United States Postal Service. If the returned CPA request is not resubmitted within the two-week period with the correct application number, the patent examining group should cancel the original "Office Date" stamp on the CPA request and re-stamp the returned CPA request with the date of receipt of the resubmission or with the date of deposit as "Express Mail" with the United States Postal Service, if the CPA request is resubmitted under 37 CFR 1.10. Where the CPA request is resubmitted later than two weeks after the return mailing by the Patent and Trademark Office, the later date of receipt or date of deposit as "Express Mail" of the resubmission will be considered to be the filing date of the CPA request. The two-week period to resubmit the returned CPA request is not extendible. See 37 CFR 1.5(a). In addition to identifying the application number of the prior application, applicant is urged to furnish in the request for a CPA the following information relating to the prior application to the best of his or her ability: (1) title of invention; (2) name of applicant(s); and (3) correspondence address. See 37 CFR 1.53(d)(8). SIGNATURE REQUIREMENT A CPA is a request to expressly abandon the prior application (37 CFR 1.53(d)(2)(v)) and, therefore, must be properly signed. For a listing of the individuals who may properly sign a CPA request, see 37 CFR 1.33(b). In a joint application with no attorney or agent, all applicants must sign the CPA request in order for the CPA request to be considered properly signed. An unsigned or improperly signed CPA request will be placed in the file of the prior application, and is entitled to an application filing date, but is ineffective to abandon the prior application. A CPA will NOT be examined until the CPA request is properly signed. A request for a CPA may be signed by a registered practitioner acting in a representative capacity under 37 CFR 1.34(a). However, correspondence concerning the CPA will be sent by the Office to the correspondence address as it appears in the prior nonprovisional application until a new power of attorney, or change of correspondence address signed by an attorney or agent of record in the prior application, is filed in the CPA. A request for a CPA may also be signed by the assignee or assignees of the entire interest. However, the request must be accompanied by papers establishing the assignee's ownership under 37 CFR 3.73(b), unless such papers were filed in the prior application and ownership has not changed. FILING DATE The filing date of a CPA is the date on which a request on a separate paper for a CPA is filed. A request for a CPA cannot be submitted as a part of papers filed for another purpose, see 37 CFR 1.53(d)(2), (e.g., the filing of a request for a CPA within an amendment after final for the prior application is an improper request for a CPA). A paper requesting a CPA may be sent to the Patent and Trademark Office by mail (see MPEP Section 501), by facsimile transmission (see MPEP Section 502.01) or it may be filed directly at the Attorney's Window located in Room 1B03 of Crystal Plaza 2, 2011 South Clark Place, Arlington, VA. In addition, a CPA request may be delivered in person to the patent examining group where the prior application is assigned. All CPA requests should be clearly marked "Box CPA." The date of receipt accorded to a CPA request sent by facsimile transmission is the date the complete transmission is received by an Office facsimile unit, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia. Correspondence for which transmission was completed on a Saturday, Sunday, or Federal holiday within the District of Columbia, will be accorded a receipt date of the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia. A CPA transmitted to the Patent and Trademark Office should be transmitted to the patent examining group or art unit to which the prior application is assigned. An applicant filing a CPA by facsimile must include an authorization to charge the basic filing fee to a deposit account, or the application will be treated under 37 CFR 1.53(f) as having been filed without the basic filing fee (as fees cannot otherwise be transmitted by facsimile). 37 CFR 1.6(f) provides for the situation in which the Office has no evidence of receipt of a CPA transmitted to the Office by facsimile transmission. 37 CFR 1.6(f) requires that a showing thereunder include, inter alia, a copy of the sending unit's report confirming transmission of the application or evidence that came into being after the complete transmission of the application and within one business day of the complete transmission of the application. The Certificate of Mailing Procedure under 37 CFR 1.8 does not apply to filing a request for a CPA, since the filing of such a request is considered to be a filing of national application papers for the purpose of obtaining an application filing date (37 CFR 1.8(a)(i)). Thus, if (1) the Patent and Trademark Office mails a final Office action on July 2, 1997 (Wednesday), with a shortened statutory period of 3 months to respond and (2) a petition for a three-month extension of time (and the fee) and a CPA are received in the Patent and Trademark Office on January 5, 1998 (Monday), accompanied by a certificate of mailing under 37 CFR 1.8 dated January 2, 1998 (Friday), then the prior application was abandoned on January 3, 1998, and the CPA is improper because the CPA was not filed before the abandonment of the prior application. As a further example, if (1) the Patent and Trademark Office mails a final Office action on July 2, 1997 (Wednesday), with a shortened statutory period of 3 months to respond and (2) applicant submits a petition for a three-month extension of time (and the fee) and a CPA request via facsimile transmission accompanied by a certificate of transmission under 37 CFR 1.8 at 9:00 PM (PST) on January 2, 1998 (Friday), but the Patent and Trademark Office does not receive the complete transmission until 12:01 AM (EST) on January 3, 1998 (Saturday), then the CPA is improper because the CPA request was not filed until January 5, 1998, see 37 CFR 1.6(a)(3), which is after the abandonment (midnight on Friday, January 2, 1998) of the prior application. FILING FEE The filing fee for a CPA is: (1) the basic filing fee as set forth in 37 CFR 1.16; and (2) any additional fee required by 37 CFR 1.16 based on the number of claims remaining in the application after entry of any amendment accompanying the CPA and entry of any amendments under 37 CFR 1.116 not entered in the prior nonprovisional application which applicant has requested to be entered in the CPA. See 37 CFR 1.53(d)(3). A general authorization to charge fees to a deposit account which was filed in the prior application carries over from the prior nonprovisional application to a CPA. Thus, where a general authorization to charge fees to a deposit account was filed in the prior application the patent examining group should charge the necessary filing fee of the CPA to the deposit account. Because small entity status does not automatically carry over from the prior application to the CPA, unless the request for a CPA specifically indicates that the filing fee is to be charged in the small entity amount, the large entity filing fee should be charged. Where a general authorization to charge fees to a deposit account was filed in the prior application and applicant desires to file a CPA without paying the filing fee on the filing date of the application, applicant may file the CPA with specific instructions revoking the general authorization filed in the prior application. Where a filing date has been assigned to a CPA, but the basic filing fee is insufficient or has been omitted, applicant will be so notified by the patent examining group and given a period of time in which to file the missing fee and to pay the surcharge set forth in 37 CFR 1.16(e) in order to prevent abandonment of the application. The time period usually set is 2 months from the date of notification. This time period is subject to the provisions of 37 CFR 1.136(a). A CPA will not be placed upon the files for examination until all of its required parts, including the filing fee and surcharge, if necessary, are received. See 37 CFR 1.53(h). Thus, it would be inappropriate to conduct an interview or to issue an action on the merits in the CPA until the filing fee and surcharge, if necessary, are received. EXTENSIONS OF TIME If an extension of time is necessary to establish continuity between the prior application and the CPA, the petition for extension of time should be filed as a separate paper directed to the prior nonprovisional application. However, a CPA is not improper simply because the request for a CPA is combined in a single paper with a petition for extension of time. The "separate paper" requirement of 37 CFR 1.53(d)(2) is intended to preclude an applicant from burying a request for a CPA in a paper submitted primarily for another purpose, e.g ., within an amendment after final for the prior application. While the filing of a CPA is not strictly a reply to an Office action mailed in a prior application, a request for a CPA is a paper directed to and placed in the file of the prior application, and seeks to take action in (i.e ., expressly abandon) the prior application. Thus, it will be considered a "reply" for purposes of 37 CFR 1.136(a)(3). As a result, an authorization in the prior application to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees to a deposit account will be treated as a constructive petition for an extension of time in the prior application for the purpose of establishing continuity with the CPA. The correct extension fee to be charged in the prior application would be the extension fee necessary to establish continuity between the prior application and the CPA on the filing date of the CPA. If an extension of time directed to the prior application is filed as a separate paper, it must be accompanied by its own certificate of mailing under 37 CFR 1.8 (if mailed by first class mail) or under 37 CFR 1.10 (if mailed by Express Mail), if the benefits of those rules are desired. NOTICE OF CPA FILING Since a "Notice of Abandonment" is not mailed in the prior application as a result of the filing of a CPA nor is a filing receipt normally sent for a CPA, the examiner should advise the applicant that a request for a CPA has been granted by including Form Paragraph 2.30 in the first Office action of the CPA. 2.30 CPA Status Acceptable The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows. Examiner Note: 1. Use this paragraph in the first Office action of a CPA to advise the applicant that a request for a CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA. 2. In bracket 1 insert the filing date of the request for a CPA. 3. In bracket 2 insert the Application Number of the parent application. A "conditional" request for a CPA will not be permitted. Any "conditional" request for a CPA submitted as a separate paper with an amendment after final in an application will be treated as an unconditional request for a CPA of the application. This will result (by operation of 37 CFR 1.53(d)(2)(v)) in the abandonment of the prior application, and (if so instructed in the request for a CPA) the amendment after final in the prior application will be treated as a preliminary amendment in the CPA. The examiner should advise the applicant that a "conditional" request for a CPA has been treated as an unconditional request for a CPA and has been accepted by including Form Paragraph 2.35 in the first Office action of the CPA. 2.35 CPA Status Acceptable - Conditional Request Receipt is acknowledged of the "conditional" request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on prior Application No. [2]. Any "conditional" request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA. Accordingly, the request for a CPA application is acceptable and a CPA has been established. An action on the CPA follows. Examiner Note: 1. Use this paragraph in the first Office action of a CPA to advise the applicant that a "conditional" request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA. 2. In bracket 1 insert the filing date of the request for a CPA. 3. In bracket 2 insert the Application Number of the parent application. Where the examiner recognizes that a paper filed in the prior application contains a request for a CPA, but the request is not in a separate paper, the examiner should, if possible, contact applicant by telephone to notify applicant that the request for a CPA is ineffective or notify the applicant in the next Office action that the CPA request is ineffective by using Form Paragraph 2.31. 2.31 CPA Status Not Acceptable - Request Not on Separate Paper Receipt is acknowledged of the request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on Application No. [2]. However, because the request was not submitted on a separate paper as required by 37 CFR 1.53(d)(2), the request is not acceptable and no CPA has been established. Examiner Note: 1. Use this paragraph to inform applicant that a request for a CPA is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established. 2. In bracket 1 insert the filing date of the paper containing the request for a CPA. 3. In bracket 2 insert the Application Number of the prior application identified in the CPA request. INVENTORSHIP The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA. 37 CFR 1.53(d)(4). The statement requesting the deletion of the names of the person or persons who are not inventors in the continuation or divisional application must be signed by person(s) authorized pursuant to 37 CFR 1.33(b) to sign an amendment in the continuation or divisional application. The examiner should acknowledge receipt of a statement filed with a CPA requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA in the first Office action in the CPA by using Form Paragraph 2.32. 2.32 Request To Delete a Named Inventor Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested. Examiner Note: 1. Use this paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a petition under 37 CFR 1.48. 2. In bracket 1 insert the name or names of the inventor(s) requested to be deleted. 3. In bracket 2 insert the filing date of the CPA. After the first Office action is mailed, the application file should be sent to OIPE for revision of its records to reflect the change of inventorship. The examiner should note the change of inventorship on the original oath or declaration by writing in red ink in the left column "See Paper No. __ for inventorship changes." See MPEP Section 201.03 and Section 605.04(g). Any request by applicant for a corrected filing receipt to show the change in inventorship should not be submitted until after the examiner has acknowledged the change in inventorship in an Office action. Otherwise, the "corrected" filing receipt may not show the change in inventorship. The inventive entity of the CPA will be the same as the inventive entity of the prior application even if the CPA papers include a transmittal letter or a new oath or declaration naming an inventor not named in the prior application. However, the new oath or declaration will be placed in the application file. Upon review of the application, the examiner will notify the applicant in the first Office action using Form Paragraph 2.33 that the inventive entity of the prior application has been carried over into the CPA. If the inventive entity set forth in the transmittal letter of the new oath or declaration is desired, then a petition under 37 CFR 1.48 along with the required fee set forth in 37 CFR 1.17(i) must be filed. No new oath or declaration need be filed with the later-filed petition under 37 CFR 1.48 if such was submitted on filing of the CPA. If a petition under 37 CFR 1.48 is not filed, it should be noted that the filing in a CPA of a transmittal letter or a new oath or declaration containing an inventor not named in the prior nonprovisional application may result in the claims in the CPA being rejected under 35 U.S.C. 102(f). 2.33 New Inventor Identified It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no petition under 37 CFR 1.48, as is required, was filed to correct the inventorship. Any request to add an inventor must be in the form of a petition under 37 CFR 1.48. Otherwise, the inventorship in the CPA shall be the same as in the prior application. Examiner Note: 1. Use this paragraph where a request for a Continued Prosecution Application (CPA) identifies one or more inventors who were not named as inventors in the prior application on the filing date of the CPA. 2. In bracket 1 insert the name or names of the inventor(s) requested to be added followed by either --was-- or --were--, as appropriate. 3. In bracket 2 insert the filing date of the CPA. No inventor may be added to a CPA except by way of a petition under 37 CFR 1.48. Also, after the filing date of the CPA, no inventor may be deleted in a CPA, except by way of a petition under 37 CFR 1.48. A petition for correction of inventorship under 37 CFR 1.48 filed in the prior nonprovisional application, but not considered in the prior nonprovisional application at the time the CPA is filed, will be considered in the CPA. BENEFIT OF EARLIER FILING DATE A request for a CPA is a specific reference under 35 U.S.C. 120 to every application assigned the application number identified in the request, and 37 CFR 1.78(a)(2) provides that a request for a CPA is the specific reference under 35 U.S.C. 120 to the prior application. That is, the CPA includes the request for an application under 37 CFR 1.53(d) and the recitation of the application number of the prior application in such request is the "specific reference to the earlier filed application" required by 35 U.S.C. 120. No further amendment to the specification of the CPA is required by 35 U.S.C. 120 or 37 CFR 1.78(a) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs). Where an application claims a benefit under 35 U.S.C. 120 of a chain of applications, the application must make a reference to the first (earliest) application and every intermediate application. See Sampson v. Ampex Corp., 463 F.2d 1042, 1044-45, 174 USPQ 417, 418-19 (2d Cir. 1972); Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 93, 160 USPQ 177, 179 (7th Cir. 1968); Hovlid v. Asari, 305 F.2d 747, 751, 134 USPQ 162, 165 (9th Cir. 1962). See also MPEP Section 201.11. In addition, every intermediate application must also make a reference to the first (earliest) application and every application after the first application and before such intermediate application. In the situation in which there is a chain of CPAs, each CPA in the chain will, by operation of 37 CFR 1.53(d)(7), contain the required specific reference to its immediate prior application, as well as every other application assigned the application number identified in such request. Put simply, a specific reference to a CPA by application number and filing date will constitute a specific reference to: (1) the non-continued prosecution application originally assigned such application number (the prior application as to the first CPA in the chain); and (2) every CPA assigned the application number of such non-continued prosecution application. Where the non-continued prosecution application originally assigned such application number itself claims the benefit of a prior application or applications under 35 U.S.C. 120, 121, or 365(c), 37 CFR 1.78(a)(2) continues to require that such application contain in its first sentence a reference to any such prior application(s). As a CPA uses the specification of the prior application, such a specific reference in the prior application (as to the CPA) will constitute such a specific reference in the CPA, as well as every CPA in the event that there is a chain of CPAs. Where an applicant in an application filed under 37 CFR 1.53(b) seeks to claim the benefit of a CPA under 35 U.S.C. 120 or 121 (as a continuation, divisional, or continuation-in-part), 37 CFR 1.78(a)(2) requires a reference to the CPA by application number in the first sentence of such application. 37 CFR 1.78(a)(2) provides that "[t]he identification of an application by application number under this section is the specific reference required by 35 U.S.C. 120 to every application assigned that application number." Thus, where a referenced CPA is in a chain of CPAs, this reference will constitute a reference under 35 U.S.C. 120 and 37 CFR 1.78(a)(2) to every CPA in the chain as well as the non-continued prosecution application originally assigned such application number. Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(a)(2), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to choose to delete such a claim as to certain applications assigned that application number (e.g., for patent term purposes). See 37 CFR 1.53(d)(7). Further, an applicant in a CPA is not permitted to amend the first sentence of the specification to provide a specific reference to the prior application. Any such amendment will not be entered. The applicant should be advised in the next Office action that any such amendment to the specification has not been entered by using Form Paragraph 2.34. 2.34 Reference in CPA to Prior Application The amendment filed [1] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [2] application of Application No. [3] has not been entered. As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. Thus, there is no need to amend the first sentence of the specification to refer back to the prior application and any such amendment shall be denied entry. Examiner Note: 1. Use this paragraph to inform the applicant that an amendment to the first sentence of the specification referring to the CPA as a continuing application of the prior application has not been entered and will not be entered if submitted again. 2. In bracket 1, insert the filing date of the amendment. 3. In bracket 2, insert either --continuation-- or --divisional--. 4. In bracket 3, insert the Application Number of the prior nonprovisional application. Claims under 35 U.S.C. 119(a)-(e) for the benefit of the filing dates of earlier applications in a parent application will automatically carry over to a CPA. WAIVER OF CONFIDENTIALITY A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file. 37 CFR 1.53(d)(6). However, all applications in the file jacket of a pending CPA are treated as pending, rather than abandoned, in determining whether copies of, and access to, such applications will be granted. 37 CFR 1.14(a)(3)(iv). See MPEP Section 103 for further discussion of access to an abandoned application contained in the file of a pending CPA. CERTIFIED COPY A certified copy of a CPA will be prepared by the Certification Branch upon request. The certified copy will consist of a copy of the most recent non-continued prosecution application in the chain of CPAs. The filing date of the CPA will be shown in the certified copy as the filing date of the most recent non-continued prosecution application in the chain of CPAs. SMALL ENTITY STATUS Small entity status established in the parent application does not automatically carry over to a CPA. Status as a small entity must be specifically established in every application in which the status is available and desired. However, 37 CFR 1.28(a)(2) provides that in any continuing application, including a CPA, status as a small entity may be established simply by paying the basic filing fee in the small entity amount. If payment of the basic filing fee in the small entity amount is made in a CPA, it would not be necessary to file a new statement or a copy of the prior statement. The payment of the small entity basic filing fee will be treated as a reference to the statement in the prior application. TERMINAL DISCLAIMER A terminal disclaimer filed in the parent application carries over to a CPA. The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e ., the application number to which the previously filed terminal disclaimer is directed. If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182 along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA. See MPEP Section 1490, "Withdrawing a Terminal Disclaimer," subheading entitled "A. Before Issuance of Patent." PRIOR ELECTION An election made in the prior application carries over to the CPA only if all of the following conditions are met: (1) the CPA is designated as a continuation or is not designated at all (i.e ., the CPA is NOT designated as a divisional); (2) there was an express election by the applicant in reply to a restriction requirement in the prior application; (3) the CPA presents claim(s) drawn only to invention(s) claimed in the prior application; and (4) the CPA does not contain an indication that a shift in election is desired. Where all of the conditions are met, the examiner's first action should repeat the restriction requirement made in the prior application to the extent it is still applicable in the CPA and include a statement that prosecution is being continued on the invention elected and prosecuted by applicant in the prior application. INFORMATION DISCLOSURE STATEMENTS All information disclosure statements filed in the prior application that comply with the content requirements of 37 CFR 1.98 will be considered in a CPA by the examiner. No specific request that the previously submitted information be considered in a CPA is required. In addition, all information disclosure statements that comply with the content requirements of 37 CFR 1.98 and are filed within three months of the filing date of a CPA will be considered by the examiner, regardless of whatever else has occurred in the examination process up to that point in time. Thus, in the rare instance that a final Office action or a notice of allowance is prepared and mailed prior to a date which is 3 months from the filing date of the CPA, any information contained in an information disclosure statement complying with 37 CFR 1.98, and filed within that 3-month window must be considered by the examiner. Since a CPA requires less processing time than a file wrapper continuing application under former 37 CFR 1.62, it should be expected that a first Office action will normally issue in a CPA well within three months from the filing date of the CPA request. The submission of an information disclosure statement after the first Office action is mailed could delay prosecution and result in the lost of patent term. Therefore, applicants are encouraged to file any information disclosure statement in a CPA as early possible, preferably before the first Office action. For further discussion of information disclosure statements, see MPEP Section 609. COPIES OF AFFIDAVITS Affidavits and declarations, such as those under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application, automatically become a part of the CPA. Therefore, no copy of the original affidavit or declaration filed in the parent nonprovisional application need be filed in the CPA. FORMS Form PTO/SB/29, "Continued Prosecution Application (CPA) Request Transmittal" may be used by applicant for filing a CPA under 37 CFR 1.53(d). The forms used by the patent examining groups to notify applicants of defects regarding applications filed under 37 CFR 1.53(d) are shown below. "Notice of Improper Application, No Filing Date Granted" Form PTO-2011; "Notice of Improper CPA Filing Under 37 CFR 1.53(d), No Filing Date Granted" Form PTO-2012; "Notice To File Missing Parts Of Application (CPA), Filing Date Granted" Form PTO-2016; "Notice Of Incomplete Reply (CPA) (Filing Date Granted)" Form PTO-2018; and "Notice Of Abandonment Under 37 CFR 1.53(f) (CPA) (Filing Date Granted)" Form PTO-2019. Form PTO/SB/29. Continued Prosecution Application (CPA) Request Transmittal[GRAPHIC] [GRAPHIC] Form PTO-2011. Notice of Improper Application[GRAPHIC] Form PTO-2012. Notice of Improper CPA Filing Under 37 CFR 1.53(d)[GRAPHIC] Form PTO-2016. Notice to File Missing Parts of Application (CPA)[GRAPHIC] Form PTO-2018. Notice of Incomplete Reply (CPA)[GRAPHIC] Form PTO-2019. Notice of Abandonment Under 37 CFR 1.53(f) (CPA)[GRAPHIC] ---SECTION---201.07 Continuation Application A continuation is a second application for the same invention claimed in a prior nonprovisional application and filed before the original becomes abandoned or patented. The continuation application may be filed under 37 CFR 1.53(b) or 1.53(d). The applicant in the continuation application must include at least one inventor named in the prior nonprovisional application. The disclosure presented in the continuation must be the same as that of the original application; i.e., the continuation should not include anything which would constitute new matter if inserted in the original application. An application claiming the benefits of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation'' of the provisional application since the application will have its patent term calculated from its filing date, whereas an application filed under 35 U.S.C. 120, 121, or 365(c) will have its patent term calculated from the date on which the earliest application was filed, provided a specific reference is made to the earlier filed application(s), 35 U.S.C. 154(a)(2) and (a)(3). At any time before the patenting or abandonment of or termination of proceedings on his or her earlier nonprovisional application, an applicant may have recourse to filing a continuation in order to introduce into the application a new set of claims and to establish a right to further examination by the primary examiner. An application under 37 CFR 1.53(d), however, must be filed prior to payment of the issue fee. For notation to be put on the file wrapper by the examiner in the case of a continuation application, see MPEP Section 202.02, unless a petition under 37 CFR 1.313(b)(5) is granted in the prior application. Use Form Paragraph 2.05 to remind applicant of possible continuation status. 2.05 Possible Status as Continuation This application discloses and claims only subject matter disclosed in prior application no [1], filed [2], and names an inventor or inventors named in the prior application. Accordingly, this application may constitute a continuation or division. Should applicant desire to obtain the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120 and 37 CFR 1.78. Examiner Note: 1. This paragraph should only be used if it appears that the application may be a continuation, but priority has not been properly established. 2. An application claiming the benefits of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation'' of the provisional application since the application will have its patent term calculated from its filing date, whereas an application filed under 35 U.S.C. 120, 121, or 365(c) will have its patent term calculated from the date on which the earliest application was filed, provided a specific reference is made to the earlier filed application(s), 35 U.S.C. 154(a)(2) and (a)(3). ---SECTION---201.08 Continuation-in-Part Application A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application by the same applicant, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application. (In re Klein, 1930 C.D. 2, 393 O.G. 519 (Comm'r Pat. 1930)). The continuation-in-part application may only be filed under 37 CFR 1.53(b). A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d). An application claiming the benefits of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation-in-part'' of the provisional application since the application will have its patent term calculated from its filing date, whereas an application filed under 35 U.S.C. 120, 121, or 365(c) will have its patent term calculated from the date on which the earliest application was filed, provided a specific reference is made to the earlier filed application(s), 35 U.S.C. 154(a)(2) and (a)(3). The mere filing of a continuation-in-part does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit. A continuation-in-part filed by a sole applicant may also derive from an earlier joint application showing a portion only of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a joint continuation-in-part application may derive from an earlier sole application. Unless the filing date of the earlier nonprovisional application is actually needed, for example, in the case of an interference or to overcome a reference, there is no need for the Office to make a determination as to whether the requirement of 35 U.S.C. 120, that the earlier nonprovisional application discloses the invention of the second application in the manner provided by the first paragraph of 35 U.S.C. 112, is met and whether a substantial portion of all of the earlier nonprovisional application is repeated in the second application in a continuation-in-part situation. Accordingly, an alleged continuation-in-part application should be permitted to claim the benefit of the filing date of an earlier nonprovisional application if the alleged continuation-in-part application complies with the following formal requirements of 35 U.S.C. 120: (A) The first application and the alleged continuation-in-part application were filed with at least one common inventor; (B) The alleged continuation-in-part application was "filed before the patenting or abandonment of or termination of proceedings on the first application or an application similarly entitled to the benefit of the filing date of the first application"; and (C) The alleged continuation-in-part application "contains or is amended to contain a specific reference to the earlier filed application." For notation to be put on the file wrapper by the examiner in the case of a continuation-in-part application see MPEP Section 202.02. See MPEP Section 708 for order of examination. Use Form Paragraph 2.06 to remind applicant of possible continuation-in-part status. 2.06 Possible Status as Continuation-in-Part This application repeats a substantial portion of prior Application No. [1], filed [2], and adds and claims additional disclosure not presented in the prior application. Since this application names an inventor or inventors named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to obtain the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120 and 37 CFR 1.78. Examiner Note: 1. This paragraph should only be used when it appears that the application may qualify as a continuation-in-part, but no priority claim has been perfected. 2. An application claiming the benefits of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation" of the provisional application since the application will have its patent term calculated from its filing date, whereas an application filed under 35 U.S.C. 120, 121, or 365(c) will have its term calculated from the date on which the earliest application was filed, provided a specific reference is made to the earlier filed application(s), 35 U.S.C. 154(a)(2) and (a)(3). ---SECTION---201.09 Substitute Application The use of the term "Substitute" to designate any application which is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application, finds official recognition in the decision Ex parte Komenak, 1940 C.D. 1, 512 O.G. 739 (Comm'r Pat. 1940). Current practice does not require applicant to insert in the specification reference to the earlier application; however, attention should be called to the earlier application. The notation on the file wrapper (see MPEP Section 202.02) that one application is a "Substitute" for another is printed in the heading of the patent copies. See MPEP Section 202.02. As is explained in MPEP Section 201.11, a "Substitute" does not obtain the benefit of the filing date of the prior application. Use Form Paragraph 2.07 to remind applicant of possible substitute status. 2.07 Definition of a Substitute Applicant refers to this application as a "substitute" of Application No. [1], filed [2]. The use of the term "substitute" to designate an application which is in essence the duplicate of an application by the same applicant abandoned before the filing of the later case finds official recognition in the decision, Ex parte Komenak, 1940 C.D. 1, 512 O.G. 739 (Comm'r Pat. 1940). The notation on the file wrapper (See MPEP Section 202.02) that one case is a "substitute" for another is printed in the heading of the patent copies. A "substitute" does not obtain the benefit of the filing date of the prior application. ---SECTION---201.10 Refile No official definition has been given the term "Refile," though it is sometimes used as an alternative for the term "Substitute." If the applicant designates his or her application as "Refile" and the examiner finds that the application is in fact a duplicate of a former application by the same party which was abandoned prior to the filing of the second application, the examiner should require the substitution of the word "substitute" for "refile", since the former term has official recognition. Use Form Paragraph 2.08 to remind applicant of possible refile status. 2.08 Definition of a Refile It is noted that applicant refers to this application as a "refile." No official definition has been given the term "refile," though it is sometimes used as an alternative for the term "substitute." Since this application appears to be in fact a duplicate of a former application which was abandoned prior to the filing of the second case, the substitution of the word "substitute" for "refile" is required since the term "substitute" has official recognition. Applicant is required to make appropriate corrections. ---SECTION---201.11 Continuity Between Applications: When Entitled to Filing Date Under certain circumstances an application for patent is entitled to the benefit of the filing date of a prior nonprovisional application or provisional application which has at least one common inventor. The conditions are specified in 35 U.S.C. 120 and 35 U.S.C. 119(e). 35 U.S.C. 120 Benefit of earlier filing date in the United States. An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. 35 U.S.C. 119 Benefit of earlier filing date; right of priority. +++ (e)(1) An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this title is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. (2) A provisional application filed under section 111(b) of this title may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) of this title has been paid and the provisional application was pending on the filing date of the application for patent under section 111(a) or section 363 of this title. There are four conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 or under 35 U.S.C. 119(e). (A) The second application must be an application for a patent for an invention which is also disclosed in the first application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the first application and in the second application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Prods., Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). Form Paragraphs 2.09 and 2.10 should be used where the disclosure of the second application is not for an invention disclosed in the first application. 2.09 Heading for Conditions for Domestic Priority Under 35 U.S.C. 119(e) or 120 Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. [1] as follows: Examiner Note: 1. In bracket 1, insert either or both --119(e)-- or --120--. 2. One or more of the following form paragraphs 2.10 to 2.12 must follow depending upon the circumstances. 2.10 Disclosure Must Be the Same The second application must be an application for a patent for an invention which is also disclosed in the first application (the parent or provisional application); the disclosure of the invention in the parent application and in the second application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). Examiner Note: 1. This paragraph must be preceded by heading paragraph 2.09. 2. Form paragraph 2.29 should be used where the claim(s) of the nonprovisional application lack(s) support in the disclosure of the provisional application. 2.29 Domestic Priority Not Granted Applicant's claim for domestic priority under 35 U.S.C. 119(e) is acknowledged. However, the provisional application upon which priority is claimed fails to provide adequate support under 35 U.S.C. 112 for claim [1] of this application. [2] Examiner Note: 1. This form paragraph may be used when there is lack of support in the provisional application for the pending claims in the nonprovisional application. 2. In bracket 2, provide an explanation of lack of support. (B) The second application must be copending with the first application or with an application similarly entitled to the benefit of the filing date of the first application. With respect to provisional applications, the second application must be filed not later than 12 months after the date on which the provisional application was filed in order to establish copendency. If the last day of pendency is on a Saturday, Sunday, or Federal holiday, the nonprovisional application must be filed on the Saturday, Sunday, or Federal holiday (See MPEP Section 505) or prior thereto, 37 CFR 1.78(a)(3). (C) The second application must contain a specific reference to the prior application(s) in the specification. A request for a continued prosecution application (CPA) filed under 37 CFR 1.53(d) is itself the specific reference required by 35 U.S.C. 120 and 37 CFR 1.78(a)(2) to every application assigned the same application number identified in the request. (Note: The CPA is assigned the same application number as the prior application.) In a CPA, a specific reference in the first sentence of the specification following the title to a prior application assigned the same application number is not required and should not be made. No amendment in a CPA may delete the specific reference to the prior application assigned the same application number. A specific reference to an application not assigned the same application number, but relied on for benefit under 35 U.S.C. 120 and 37 CFR 1.78(a)(2) is required. Cross references to other related applications not assigned the same application as the CPA may be made when appropriate. Form Paragraphs 2.09 and 2.12 are required to be used to indicate reference to the prior application. 2.12 Application Must Contain a Reference to Parent An application in which the benefits of an earlier application are desired must contain a specific reference to the prior application(s) in the first sentence of the specification (37 CFR 1.78). Examiner Note: 1. This paragraph must be preceded by heading paragraph 2.09. 2. This paragraph should not be used for a continued prosecution application (CPA). In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), a specific reference in the first sentence of the specification to the prior application is not required and should not be made. The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA application (37 CFR 1.53(d)(2)(iv) and (d)(7)). (D) The second application must be filed by an inventor or inventors named in the previously filed application. COPENDENCY Copendency is defined in the clause which requires that the second application must be filed before (1) the patenting, or (2) the abandonment of, or (3) the termination of proceedings in the first application. Since provisional applications become abandoned, by operation of law, 12 months after filing, any nonprovisional application that claims the benefit of the provisional application filing date must be filed not later than 12 months after the filing date of the provisional application. Use Form Paragraphs 2.09 and 2.11 to indicate copendency is required. 2.11 Application Must Be Copending With Parent An application in which the benefits of an earlier application are desired must be copending with the prior application or with an application similarly entitled to the benefit of the filing date of the prior application. Examiner Note: This paragraph must be preceded by heading paragraph 2.09. If the first application issues as a patent, it is sufficient for the second application to be copending with it if the second application is filed on the same date, or before the date that the patent issues on the first application. Thus, the second application may be filed while the first is still pending before the examiner, while it is in issue, or even (for applications filed under 37 CFR 1.53(b) or former 37 CFR 1.60) between the time the issue fee is paid and the patent issues. If the first application is abandoned, the second application must be filed before the abandonment in order for it to be copending with the first. The term "abandoned," refers to abandonment for failure to prosecute (MPEP Section 711.02), express abandonment (MPEP Section 711.01), and abandonment for failure to pay the issue fee (37 CFR 1.316). Provisional applications become abandoned, by operation of law, 12 months after filing (35 U.S.C. 111(b)(5)). A provisional application may become abandoned at an earlier date for failure to comply with filing requirements such as failure to submit the required fee in a timely manner (35 U.S.C. 111(b)(3)(c)). If an abandoned application is revived or a petition for late payment of the issue fee is granted by the Commissioner, it becomes reinstated as a pending application and the preceding period of abandonment has no effect. See MPEP Section 711.03(c). A provisional application that has been abandoned may be revived so as to be pending for a period of no longer than 12 months from its filing date (37 CFR 1.137(e)). The expression "termination of proceedings" includes the situations when an application is abandoned or when a patent has been issued, and hence this expression is the broadest of the three. After a decision by the Court of Appeals for the Federal Circuit in which the rejection of all claims is affirmed, proceedings are terminated on the date of receipt of the Court's certified copy of the decision by the Patent and Trademark Office. Continental Can Company, Inc. v. Schuyler, 168 USPQ 625 (D.D.C. 1970). There are several other situations in which proceedings are terminated as is explained in MPEP Section 711.02(c). When proceedings in an application are terminated, the application is treated in the same manner as an abandoned application, and the term "abandoned application" may be used broadly to include such applications. The term "continuity" is used to express the relationship of copendency of the same subject matter in two different applications of the same inventor. The second application may be referred to as a continuing application when the first application is not a provisional application. Continuing applications include those applications which are called divisions, continuations, and continuations-in-part. As far as the right under the statute is concerned the name used is immaterial, the names being merely expressions developed for convenience. The statute is so worded that the first application may contain more than the second, or the second application may contain more than the first, and in either case the second application is entitled to the benefit of the filing date of the first as to the common subject matter. REFERENCE TO FIRST APPLICATION The third requirement of the statute is that the second (or subsequent) application must contain a specific reference to the first application. This should appear as the first sentence of the specification following the title preferably as a separate paragraph (37 CFR 1.78(a)). A request for a continued prosecution application (CPA) filed under 37 CFR 1.53(d) is itself the specific reference required by 35 U.S.C. 120 and 37 CFR 1.78(a)(2) to every application assigned the same application number identified in the request. (Note: The CPA is assigned the same application number as the prior application.) In a CPA, a specific reference in the first sentence of the specification following the title to a prior application assigned the same application number is not required and should not be made. No amendment in a CPA may delete the specific reference to the prior application assigned the same application number. A specific reference to an application not assigned the same application number, but relied on for benefit under 35 U.S.C. 120 and 37 CFR 1.78(a)(2) is required. Cross references to other related applications not assigned the same application as the CPA may be made when appropriate.When the nonprovisional application is entitled under 35 U.S.C. 120 to an earlier U.S. effective filing date, a statement such as "This is a division (continuation, continuation-in-part) of Application No. ---, filed ---'' should appear as the first sentence of the description, except in the case of design applications where it should appear as set forth in MPEP Section 1504.20. Where a nonprovisional application is claiming the benefit under 35 U.S.C. 120 of a prior national stage application filed under 35 U.S.C. 371, a suitable reference would read "This application is a continuation of U.S. Application No. 08/---, filed ---, which was the National Stage of International Application No. PCT/DE95/---, filed ---." When the nonprovisional application is entitled to an earlier U.S. effective filing date of one or more provisional applications under 35 U.S.C. 119(e), a statement such as "This application claims the benefit of U.S. Provisional Application No. 60/---, filed ---, and U.S. Provisional Application No. 60/ ---, filed ---.'' should appear as the first sentence of the description. In addition, for an application which is claiming the benefit under 35 U.S.C. 120 of a prior application, which in turn claims the benefit of a provisional application under 35 U.S.C. 119(e), a suitable reference would read, "This application is a continuation of U.S. Application No. 08/---, filed ---, now abandoned, which claims the benefit of U.S. Provisional Application No. 60/---, filed ---.'' Status of nonprovisional parent applications (whether it is patented or abandoned) should also be included. If a parent application has become a patent, the expression, "Patent No. _ _ " should follow the filing date of the parent application. If a parent application has become abandoned, the expression "abandoned" should follow the filing date of the parent application. In the case of design applications, it should appear as set forth in MPEP Section 1504.20. In view of this requirement, the right to rely on a prior application may be waived or refused by an applicant by refraining from inserting a reference to the prior application in the specification of the later one. If the examiner is aware of the fact that an application is a continuing application of a prior one, he or she should merely call attention to this in an Office action by using the wording of Form Paragraphs 2.15 or 2.16. 2.15 Reference to Parent Application, 35 U.S.C. 119(e) or 120 Benefit If applicant desires priority under 35 U.S.C. [1] based upon a previously filed copending application, specific reference to the earlier filed application must be made in the instant application. This should appear as the first sentence of the specification following the title, preferably as a separate paragraph. The status of nonprovisional parent application(s) (whether patented or abandoned) should also be included. If a parent application has become a patent, the expression "now Patent No. _______" should follow the filing date of the parent application. If a parent application has become abandoned, the expression "now abandoned" should follow the filing date of the parent application. Examiner Note: 1. In bracket 1, insert --119(e)-- or --120--. 2. In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), a specific reference in the first sentence of the specification to the prior application is not required and should not be made. The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA application. 37 CFR 1.53(d)(2)(iv) and (d)(7). 2.16 Reference to Copending Application It is noted that this application appears to claim subject matter disclosed in prior copending Application No. [1], filed [2]. A reference to the prior application must be inserted as the first sentence of the specification of this application if applicant intends to rely on the filing date of the prior application under 35 U.S.C. 119(e) or 120. See 37 CFR 1.78(a). Also, the current status of all nonprovisional parent applications referenced should be included. Examiner Note: In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), a specific reference in the first sentence of the specification to the prior application is not required and should not be made. The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA application. 37 CFR 1.53(d)(2)(iv) and (d)(7). If the examiner is aware of a prior application he or she should note it in an Office action, as indicated above, but should not require the applicant to call attention to the prior application. In an application filed under former 37 CFR 1.60 applicant, in the amendment canceling the nonelected claims, should include directions to enter "This is a division (continuation) of application No. .........., filed ...................." as the first sentence. Where the applicant has inadvertently failed to do this the wording of Form Paragraph 2.17 should be used. Where the application filed under former 37 CFR 1.60 is otherwise ready for allowance, the examiner should insert the quoted sentence by examiner's amendment. Applications are sometimes filed with a division, continuation, or continuation-in-part oath or declaration, in which the oath or declaration refers back to a prior application. If there is no reference in the specification, in such cases, the examiner should merely call attention to this fact in his or her Office action, utilizing the wording of Form Paragraph 2.17. 2.17 Reference in Continuation/Divisional Applications Under Former 37 CFR 1.60 This application filed under former 37 CFR 1.60 lacks the necessary reference to the prior application. A statement reading "This is a [1] of Application No. [2], filed [3]." should be entered following the title of the invention or as the first sentence of the specification. Also, the current status of all nonprovisional parent applications referenced should be included. Examiner Note: 1. In bracket 1, insert either --division-- or --continuation--. 2. Use only in former 37 CFR 1.60 applications. For File Wrapper Continuing applications under former 37 CFR 1.62, use form paragraph 2.28. 3. Do not use if the prior application is a provisional application. 4. Do not use if the application is a continued prosecution application (CPA) filed under 37 CFR 1.53(d). Where the applicant has inadvertently failed to make a reference to the parent application in an application filed under former 37 CFR 1.60 or 1.62 which is otherwise ready for issue, the examiner should insert the required reference by examiner's amendment. Sometimes a pending application is one of a series of applications wherein the pending application is not copending with the first filed application but is copending with an intermediate application entitled to the benefit of the filing date of the first application. If applicant desires that the pending application have the benefit of the filing date of the first filed application he or she must, besides making reference in the specification to the intermediate application, also make reference in the specification to the first application. See Hovlid v. Asari, 305 F. 2d 747, 134 USPQ 162 (9th Cir. 1962); and Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 160 USPQ 177 (7th Cir. 1968). There is no limit to the number of prior applications through which a chain of copendency may be traced to obtain the benefit of the filing date of the earliest of a chain of prior copending applications. See In re Henriksen, 399 F2.d 253, 158 USPQ 224 (CCPA 1968). A second application which is not copending with the first application, which includes those called substitutes in MPEP Section 201.09, is not entitled to the benefit of the filing date of the prior application and the bars to the grant of a patent are computed from the filing date of the second application. An applicant is not required to refer to such applications in the specification of the later filed application, but is required to otherwise call the examiner's attention to the earlier application if it or its contents or prosecution are material as defined in 37 CFR 1.56(b). If the examiner is aware of such a prior abandoned application he or she should make a reference to it in an Office action in order that the record of the second application will show this fact. If an applicant refers to a prior noncopending abandoned application in the specification, the manner of referring to it should make it evident that it was abandoned before filing the second. For notations to be placed on the file wrapper in the case of continuing applications, see MPEP Section 202.02 and Section 1302.09. Effective June 8, 1995, Public Law 103-465 amended 35 U.S.C. 154 to change the term of a patent to 20 years measured from the filing date of the earliest U.S. application for which benefit under 35 U.S.C. 120, 121, or 365(c) is claimed. The 20-year patent term applies to all utility and plant patents issued on applications filed on or after June 8, 1995. As a result of the 20-year patent term, it is expected, in certain circumstances, that applicants may cancel their claim to priority by amending the specification (no supplemental declaration is necessary) to delete any references to prior applications. In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), no amendment may delete the specific reference to a prior application assigned the same application number. (Note: In the CPA, the request is the specific reference required by 35 U.S.C. 120 and 37 CFR 1.78(a)(2) to every application assigned the same application number identified in the request. Further, in a CPA, a specific reference in the first sentence of the specification following the title to a prior application assigned the same application number is not required and should not be made.) Upon entry of the amendment, the examiner must return the application to the Office of Initial Patent Examination (OIPE), accompanied by a completed OIPE Data Base Routing Slip, for correction of the file wrapper label and for updating the PALM data base. For 09/ series applications, it will not be necessary to forward the application to OIPE for correction of the parent application data in PALM. The correction or entry of the data in the PALM data base can be made by technical support staff of the examining group. Upon entry of the data, a new PALM bib-data sheet should be printed and placed in the file wrapper. See also MPEP Section 707.05 and Section 1302.09. SAME INVENTOR OR INVENTORS The statute also requires that the applications claiming benefit of the earlier filing date under 35 U.S.C. 119(e) or 120 be filed by an inventor or inventors named in the previously filed application or provisional application. WHEN NOT ENTITLED TO BENEFIT OF FILING DATE Where the first application (a nonprovisional application) is found to be fatally defective because of insufficient disclosure to support allowable claims, a second application filed as a "continuation-in-part" of the first application to supply the deficiency is not entitled to the benefit of the filing date of the first application. Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 587, 83 USPQ 277, 281 (2d Cir. 1949) and cases cited therein. Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application such a claim is entitled only to the filing date of the continuation-in-part application; In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); Transco Products, Inc. v. Performance Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994); In re Von Lagenhoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA 1972); and Chromalloy American Corp. v. Alloy Surfaces Co., Inc., 339 F. Supp. 859, 874, 173 USPQ 295, 306 (D. Del. 1972). By way of further illustration, if the claims of a continuation-in-part application which are only entitled to the continuation-in-part filing date, "read on" such published, publicly used or sold, or patented subject matter (e.g., as in a genus- species relationship) a rejection under 35 U.S.C. 102 would be proper. Cases of interest in this regard are as follows: Mendenhall v. Cedarapids Inc., 5 F.3d 1557, 28 USPQ2d 1081 (Fed. Cir. 1993); In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971); In re Hafner, 410 F.2d 1403, 161 USPQ 783 (CCPA 1969); In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958); In re Steenbock, 83 F.2d 912, 30 USPQ 45 (CCPA 1936); Ex parte Hageman, 179 USPQ 747 (Bd. App. 1971). ---SECTION---201.11(a) Filing of Continuation or Continuation-in-Part Application During Pendency of International Application Designating the United States It is possible to file a U.S. national application under 35 U.S.C. 111(a) and 37 CFR 1.53(b) during the pendency (prior to the abandonment) of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371(c). The ability to take such action is based on provisions of the United States patent law. 35 U.S.C. 363 provides that "An international application designating the United States shall have the effect from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office...". 35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) "shall be regarded as abandonment by the parties thereof...". It is therefore clear that an international application which designates the United States has the effect of a pending U.S. application from the international application filing date until its abandonment as to the United States. The first sentence of 35 U.S.C. 365(c) specifically provides that "In accordance with the conditions and requirements of section 120 of this title,... a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States." The condition of 35 U.S.C. 120 relating to the time of filing requires the later application to be "filed before the patenting or abandonment of or termination of proceedings on the first application...". The filing of a continuation or continuation-in-part application of an international application may be useful to patent applicants where the oath or declaration required by 35 U.S.C. 371(c)(4) cannot be filed as required by 37 CFR 1.494(h) or 1.495. An applicant filing an application under 35 U.S.C. 111(a) and 37 CFR 1.53(b) may obtain additional time to file the oath or declaration under 37 CFR 1.53(f) and 1.136(a). A continuing application under 35 U.S.C. 365(c) and 120 must be filed before the abandonment or patenting of the prior nonprovisional application. See 37 CFR 1.494 and 1.495. ---SECTION---201.12 Assignment Carries Title Assignment of an original application carries title to any divisional, continuation, or reissue application stemming from the original application and filed after the date of assignment. See MPEP Section 306. When the assignment is in a provisional application, see MPEP Section 306.01. ---SECTION---201.13 Right of Priority of Foreign Application Under certain conditions and on fulfilling certain requirements, an application for patent filed in the United States may be entitled to the benefit of the filing date of a prior application filed in a foreign country, to overcome an intervening reference or for similar purposes. The conditions are specified in 35 U.S.C. 119(a)-(d). 35 U.S.C. 119 Benefit of earlier filing date; right of priority. (a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed; but no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing. (b) No application for patent shall be entitled to this right of priority unless a claim therefor and a certified copy of the original foreign application, specification, and drawings upon which it is based are filed in the Patent and Trademark Office before the patent is granted, or at such time during the pendency of the application as required by the Commissioner not earlier than six months after the filing of the application in this country. Such certification shall be made by the patent office of the foreign country in which filed and show the date of the application and of the filing of the specification and other papers. The Commissioner may require a translation of the papers filed if not in the English language and such other information as he deems necessary. (c) In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority. (d) Applications for inventors' certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor's certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents, provided such applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of such filing. +++ 37 CFR 1.55 Claim for foreign priority. (a) An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and 172. The claim to priority need be in no special form and may be made by the attorney or agent if the foreign application is referred to in the oath or declaration as required by Section 1.63. The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) must be filed in the case of an interference (Section 1.630), when necessary to overcome the date of a reference relied upon by the examiner, when specifically required by the examiner, and in all other situations, before the patent is granted. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must be accompanied by a petition requesting entry and by the fee set forth in Section 1.17(i). If the certified copy is not in the English language, a translation need not be filed except in the case of interference; or when necessary to overcome the date of a reference relied upon by the examiner; or when specifically required by the examiner, in which event an English language translation must be filed together with a statement that the translation of the certified copy is accurate. +++ The period of 12 months specified in this section is 6 months in the case of designs, 35 U.S.C. 172. See MPEP Section 1504.10. The conditions, for benefit of the filing date of a prior application filed in a foreign country, may be listed as follows: (A) The foreign application must be one filed in "a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States." (B) The foreign application must have been filed by the same applicant (inventor) as the applicant in the United States, or by his or her legal representatives or assigns. (C) The application, or its earliest parent United States application under 35 U.S.C. 120, must have been filed within 12 months from the date of the earliest foreign filing in a "recognized" country as explained below. (D) The foreign application must be for the same invention as the application in the United States. (E) In the case where the basis of the claim is an application for an inventor's certificate, the requirements of 37 CFR 1.55(b) must also be met. Applicant may be informed of possible priority rights under 35 U.S.C. 119(a)-(d) by using the wording of Form Paragraph 2.18. 2.18 Right of Priority Under 35 U.S.C. 119(a)-(d) Applicant is advised of possible benefits under 35 U.S.C. 119(a)-(d), wherein an application for patent filed in the United States may be entitled to the benefit of the filing date of a prior application filed in a foreign country. RECOGNIZED COUNTRIES OF FOREIGN FILING The right to rely on a foreign application is known as the right of priority in international patent law and this phrase has been adopted in the U.S. statute. The right of priority originated in a multilateral treaty of 1883, to which the United States adhered in 1887, known as the Paris Convention for the Protection of Industrial Property (Paris Convention). The treaty is administered by the World Intellectual Property Organization (WIPO) at Geneva, Switzerland. This treaty has been revised several times, the latest revision in effect being written in Stockholm in July 1967 (copy at Appendix P of this Manual). Articles 13-30 of the Stockholm Revision became effective on September 5, 1970. Articles 1-12 of the Stockholm Revision became effective on August 25, 1973. One of the many provisions of the treaty requires each of the adhering countries to accord the right of priority to the nationals of the other countries and the first United States statute relating to this subject was enacted to carry out this obligation. There is another treaty between the United States and some Latin American countries which also provides for the right of priority. A foreign country may also provide for this right by reciprocal legislation. The United States and Taiwan signed an agreement on priority for patent and trademark applications on April 10, 1996, and Taiwan is now a country for which the right of priority is recognized in the United States. Applicants seeking patent protection in the United States may avail themselves of the right of priority based on patent applications filed in Taiwan, on or after April 10, 1996. Effective January 3, 1995, India became a country for which the right of priority is recognized in the United States. Accordingly, applicants seeking patent protection in the United States may avail themselves of the right of priority based on patent applications filed in India on or after January 3, 1995. An application for patent filed in the United States on or after January 1, 1996, by any person who has, or whose legal representatives or assigns have, previously filed an application for patent in Thailand shall have the benefit of the filing date in Thailand in accordance with 35 U.S.C. 119 and 172. NOTE: Following is a list of countries with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized. The letter "I" following the name of the country indicates that the basis for priority in the case of these countries is the Paris Convention for the Protection of Industrial Property (613 O.G. 23, 53 Stat. 1748). The letter "P" after the name of the country indicates the basis for priority of these countries is the Inter-American Convention relating to Inventions, Patents, Designs, and Industrial Models, signed at Buenos Aires, August 20, 1910 (207 O.G. 935, 38 Stat. 1811). The letter "L" following the name of the country indicates the basis for priority is reciprocal legislation in the particular country. Albania (I), Algeria (I), Argentina (I), Armenia (I), Australia (I), Austria (I), Azerbaijan (I), Bahamas (I), Bahrain (I), Bangladesh (I), Barbados (I), Belarus (I), Belgium (I), Benin (I), Bolivia (I,P), Bosnia and Herzegovina (I), Brazil (I, P), Bulgaria (I), Burkina Faso (I), Burundi (I), Cameroon (I), Canada (I), Central African Republic (I), Chad (I), Chile (I), China (I), Colombia (I), Congo (I), Costa Rica (I,P), Cote d'Ivoire (I), Croatia (I), Cuba (I, P), Cyprus (I), Czech Republic (I), Democratic People's Republic of Korea (I), Democratic Republic of the Congo (I), Denmark (I), Dominican Republic (I,P), Ecuador (P), Egypt (I), El Salvador (I), Equatorial Guinea (I), Estonia (I), Finland (I), France (I), Gabon (I), Gambia (I), Georgia (I), Germany (I), Ghana (I), Greece (I), Guinea (I), Guinea-Bissau (I), Guatemala (P), Guyana (I), Haiti (I,P), Holy See (I), Honduras (I,P), Hungary (I), Iceland (I), India (L), Indonesia (I), Iran (Islamic Republic of) (I), Iraq (I), Ireland (I), Israel (I), Italy (I), Japan (I), Jordan (I), Kazakstan (I), Kenya (I), Korea, Republic of (I), Kyrgyzstan (I), Latvia (I), Lebanon (I), Lesotho (I), Liberia (I), Libya (I), Liechtenstein (I), Lithuania (I), Luxembourg (I), Madagascar (I), Malawi (I), Malaysia (I), Mali (I), Malta (I), Mauritania (I), Mauritius (I), Mexico (I), Moldova, Republic of (I), Monaco (I), Mongolia (I), Morocco (I), Netherlands (I), New Zealand (I), Nicaragua (I,P), Niger (I), Nigeria (I), Norway (I), Panama (I), Paraguay (I,P), Peru (I), Philippines (I), Poland (I), Portugal (I), Romania (I), Russian Federation (I), Rwanda (I), Saint Kitts and Nevis (I), Saint Lucia (I), Saint Vincent and the Grenadines (I), San Marino (I), Senegal, Republic of (I), Sierra Leone (I), Singapore (I), Slovakia (I), Slovenia (I), South Africa (I), Spain (I), Sri Lanka (I), Sudan (I), Suriname (I), Swaziland (I), Sweden (I), Switzerland (I), Syria (I), Taiwan (L), Tajikistan (I), Tanzania, United Republic of (I), Thailand (L), The former Yugoslav Republic of Macedonia (I), Togo (I), Trinidad and Tobago (I), Tunisia (I), Turkey (I), Turkmenistan (I), Uganda (I), Ukraine (I), United Arab Emirates (I), United Kingdom (I), Uruguay (I, P), Uzbekistan (I), Venezuela (I), Viet Nam (I), Yugoslavia (I), Zambia (I), Zimbabwe (I). Twelve African Countries have joined together to create a common patent office and to promulgate a common law for the protection of inventions, trademarks, and designs. The common patent office is called "Organisation Africain de la Propriete Intellectuelle" (OAPI) and is located in Yaounde, Cameroon. The English title is "African Intellectual Property Organization." The member countries using the OAPI Patent Office are Benin, Cameroon, Central African Republic, Chad, Congo, Gabon, Cote d'Ivoire, Mauritania, Niger, Senegal, Republic of Togo, and Burkina Faso. Since all these countries adhere to the Paris Convention for the Protection of Industrial Property, priority under 35 U.S.C. 119(a)-(d) may be claimed of an application filed in the OAPI Patent Office. If any applicant asserts the benefit of the filing date of an application filed in a country not on this list, the examiner should inquire of the Office of Legislation and International Affairs to determine if there has been any change in the status of that country. It should be noted that the right is based on the country of the foreign filing and not upon the citizenship of the applicant. RIGHT OF PRIORITY (35 U.S.C. 119(a)-(d) AND 365) BASED ON A FOREIGN APPLICATION FILED UNDER A BILATERAL OR MULTILATERAL TREATY Under Article 4A of the Paris Convention for the Protection of Industrial Property a right of priority may be based either on an application filed under the national law of a foreign country adhering to the Convention or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries. Examples of such treaties are The Hague Agreement Concerning the International Deposit of Industrial Designs, the Benelux Designs Convention, and the Libreville Agreement of September 13, 1962, relating to the creation of an African Intellectual Property Office. The Convention on the Grant of European Patents and the Patent Cooperation Treaty (MPEP Section 201.13(b)) are further examples of such treaties. A. The Priority Claim In claiming priority of a foreign application previously filed under such a treaty, certain information must be supplied to the Patent and Trademark Office. In addition to the application number and the date of the filing of the application, the following information is required: (1) the name of the treaty under which the application was filed and (2) the name and location of the national or intergovernmental authority which received such application. B. Certification of the Priority Papers 35 U.S.C. 119(b) requires the applicant to furnish a certified copy of priority papers. Certification by the authority empowered under a bilateral or multilateral treaty to receive applications which give rise to a right of priority under Article 4A(2) of the Paris Convention will be deemed to satisfy the certification requirement. C. Identity of Inventors The inventors of the U.S. nonprovisional application and of the foreign application must be the same, for a right of priority does not exist in the case of an application of inventor A in the foreign country and inventor B in the United States, even though the two applications may be owned by the same party. However, the application in the foreign country may have been filed by the assignee, or by the legal representative or agent of the inventor which is permitted in some foreign countries, rather than by the inventor himself, but in such cases the name of the inventor is usually given in the foreign application on a paper filed therein. An indication of the identity of inventors made in the oath or declaration accompanying the U.S. nonprovisional application by identifying the foreign application and stating that the foreign application had been filed by the assignee, or the legal representative, or agent, of the inventor, or on behalf of the inventor, as the case may be, is acceptable. Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications. See MPEP Section 605.07. D. Time for Filing U.S. Nonprovisional Application The United States nonprovisional application, or its earliest parent nonprovisional application under 35 U.S.C. 120, must have been filed within 12 months of the earliest foreign filing. In computing this 12 months, the first day is not counted; thus, if an application was filed in Canada on January 3, 1983, the U.S. nonprovisional application may be filed on January 3, 1984. The Convention specifies in Article 4C(2) that "the day of filing is not counted in this period." (This is the usual method of computing periods, for example a 6-month period for reply to an Office action dated January 2 does not expire on July 1, but the reply may be made on July 2.) If the last day of the 12 months is a Saturday, Sunday, or Federal holiday within the District of Columbia, the U.S. nonprovisional application is in time if filed on the next succeeding business day; thus, if the foreign application was filed on September 4, 1981, the U.S. nonprovisional application is in time if filed on September 7, 1982, since September 4, 1982, was a Saturday and September 5, 1982 was a Sunday and September 6, 1982 was a Federal holiday. Since January 1, 1953, the Office has not received applications on Saturdays and, in view of 35 U.S.C. 21, and the Convention which provides "if the last day of the period is an official holiday, or a day on which the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day" (Article 4C(3), if the 12 months expires on Saturday, the U.S. application may be filed on the following Monday. Note Ex parte Olah, 131 USPQ 41 (Bd. App. 1960). See, e.g., Dubost v. U.S. Patent and Trademark Office, 777 F.2d 1561, 1562, 227 USPQ 977, 977 (Fed. Cir. 1985). E. Filing of Papers During Unscheduled Closings of the Patent and Trademark Office 37 CFR 1.9(h) provides that the definition of "Federal holiday within the District of Columbia" includes an official closing of the Office. When the entire Patent and Trademark Office is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a "Federal holiday within the District of Columbia" under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open. In addition, 37 CFR 1.6(a)(1) provides "[t]he Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia" to clarify that any day that is a Saturday, Sunday or Federal holiday within the District of Columbia is a day that the Patent and Trademark Office is not open for the filing of applications within the meaning of Article 4C(3) of the Paris Convention. Note further that in accordance with 37 CFR 1.6(a)(2), even when the Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia, correspondence deposited as Express Mail with the USPS in accordance with 37 CFR 1.10 will be considered filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or Federal holiday within the District of Columbia (under 35 U.S.C. 21(b) or 37 CFR 1.7). When the Patent and Trademark Office is open for business during any part of a business day between 8:30 a.m. and 5:00 p.m., papers are due on that day even though the Office may be officially closed for some period of time during the business day because of an unscheduled event. The procedures of 37 CFR 1.10 may be used for filing applications. Information regarding whether or not the Office is officially closed on any particular day may be obtained by calling (703) 308-4357 which transposes to (703) 308-HELP. F. First Foreign Application The 12 months is from earliest foreign filing except as provided in 35 U.S.C 119(c). If an inventor has filed an application in France on January 4, 1982, and an identical application in the United Kingdom on March 3, 1982, and then files in the United States on February 2, 1983, the inventor is not entitled to the right of priority at all; the inventor would not be entitled to the benefit of the date of the French application since this application was filed more than twelve months before the U.S. application, and the inventor would not be entitled to the benefit of the date of the United Kingdom application since this application is not the first one filed. Ahrens v. Gray, 1931 C.D. 9, 402 O.G. 261 (Bd. App. 1929). If the first foreign application was filed in a country which is not recognized with respect to the right of priority, it is disregarded for this purpose. Public Law 87-333 modified 35 U.S.C. 119(c) to extend the right of priority to "subsequent" foreign applications if one earlier filed had been withdrawn, abandoned, or otherwise disposed of, under certain conditions. The United Kingdom and a few other countries have a system of "post-dating" whereby the filing date of an application is changed to a later date. This "post-dating" of the filing date of the application does not affect the status of the application with respect to the right of priority; if the original filing date is more than one year prior to the U.S. filing no right of priority can be based upon the application. See In re Clamp, 151 USPQ 423 (Comm'r Pat. 1966). If an applicant has filed two foreign applications in recognized countries, one outside the year and one within the year, and the later application discloses additional subject matter, a claim in the U.S. application specifically limited to the additional disclosure would be entitled to the date of the second foreign application since this would be the first foreign application for that subject matter. EFFECT OF RIGHT OF PRIORITY The right to rely on the foreign filing extends to overcoming the effects of intervening references or uses, but there are certain restrictions. For example, the 1 year bar of 35 U.S.C. 102(b) dates from the U.S. filing date and not from the foreign filing date; thus if an invention was described in a printed publication, or was in public use in this country, in November 1981, a foreign application filed in January 1982, and a U.S. application filed in December 1982, granting a patent on the U.S. application is barred by the printed publication or public use occurring more than one year prior to its actual filing in the United States. The right of priority can be based upon an application in a foreign country for a so-called "utility model," called Gebrauchsmuster in Germany. ---SECTION---201.13(a) Right of Priority Based Upon an Application for an Inventor's Certificate 37 CFR 1.55 Claim for foreign priority. +++ (b) An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor's certificate in a country granting both inventor's certificates and patents. To claim the right of priority on the basis of an application for an inventor's certificate in such a country under 35 U.S.C. 119(d), the applicant when submitting a claim for such right as specified in paragraph (a) of this section, shall include an affidavit or declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor's certificate, had the option to file an application for either a patent or an inventor's certificate as to the subject matter of the identified claim or claims forming the basis for the claim of priority. An inventor's certificate may form the basis for rights of priority under 35 U.S.C. 119(d) only when the country in which they are filed gives to applicants, at their discretion, the right to apply, on the same invention, either for a patent or for an inventor's certificate. The affidavit or declaration specified under 37 CFR 1.55(b) is only required for the purpose of ascertaining whether, in the country where the application for an inventor's certificate originated, this option generally existed for applicants with respect to the particular subject matter of the invention involved. The requirements of 35 U.S.C. 119(d) and 37 CFR 1.55(b) are not intended, however, to probe into the eligibility of the particular applicant to exercise the option in the particular priority application involved. It is recognized that certain countries that grant inventors' certificates also provide by law that their own nationals who are employed in state enterprises may only receive inventors' certificates and not patents on inventions made in connection with their employment. This will not impair their right to be granted priority in the United States based on the filing of the inventor's certificate. Accordingly, affidavits or declarations filed pursuant to 37 CFR 1.55(b) need only show that in the country in which the original inventor's certificate was filed, applicants generally have the right to apply at their own option either for a patent or an inventor's certificate as to the particular subject matter of the invention. Priority rights on the basis of an inventor's certificate application will be honored only if the applicant had the option or discretion to file for either an inventor's certificate or a patent on his or her invention in his or her home country. Certain countries which grant both patents and inventor's certificates issue only inventor's certificates on certain subject matter, generally pharmaceuticals, foodstuffs, and cosmetics. To ensure compliance with the treaty and statute, 37 CFR 1.55(b) provides that at the time of claiming the benefit of priority for an inventor's certificate, the applicant or his or her attorney must submit an affidavit or declaration stating that the applicant when filing his or her application for the inventor's certificate had the option either to file for a patent or an inventor's certificate as to the subject matter forming the basis for the claim of priority. Effective Date 37 CFR 1.55(b) originally went into effect on August 25, 1973, which is the date on which the international treaty entered into force with respect to the United States. The rights of priority based on an earlier filed inventor's certificate shall be granted only with respect to U.S. patent applications where both the earlier application and the U.S. patent application were filed in their respective countries following this effective date. ---SECTION---201.13(b) Right of Priority Based Upon an International Application Filed Under the Patent Cooperation Treaty 35 U.S.C. 365 Right of priority; benefit of the filing date of a prior application. (a) In accordance with the conditions and requirements of subsections (a) through (d) of section 119 of this title, a national application shall be entitled to the right of priority based on a prior filed international application which designated at least one country other than the United States. (b) In accordance with the conditions and requirements of section 119(a) of this title and the treaty and the Regulations, an international application designating the United States shall be entitled to the right of priority based on a prior foreign application, or a prior international application designating at least one country other than the United States. (c) In accordance with the conditions and requirements of section 120 of this title, an international application designating the United States shall be entitled to the benefit of the filing date of a prior national application or a prior international application designating the United States, and a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States. If any claim for the benefit of an earlier filing date is based on a prior international application which designated but did not originate in the United States, the Commissioner may require the filing in the Patent and Trademark Office of a certified copy of such application together with a translation thereof into the English language, if it was filed in another language. 35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States. Of course, the conditions prescribed by section 119(a)-(d) of title 35 U.S.C., which deals with the right of priority based on earlier filed foreign applications, must be complied with. 35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application. The international application upon which the claim of priority is based can either have been filed in the United States or a foreign country; however, it must contain the designation of at least one country other than, or in addition to, the United States. As far as the actual place of filing is concerned, for the purpose of 35 U.S.C. 365(a) and (b) and 35 U.S.C. 119(a)-(d), an international application designating a country is considered to be a national application regularly filed in that country on the international filing date irrespective of whether it was physically filed in that country, in another country, or in an intergovernmental organization acting as Receiving Office for a country. An international application which seeks to establish the right of priority will have to comply with the conditions and requirements as prescribed by the Treaty and the PCT Regulations, in order to avoid rejection of the claim to the right of priority. Reference is especially made to the requirement of making a declaration of the claim of priority at the time of filing of the international application (Article 8(1) of the Treaty and Rule 4.10 of the PCT Regulations) and the requirement of either filing a certified copy of the priority document with the international application, or submitting a certified copy of the priority document to the International Bureau at a certain time (Rule 17 of the PCT Regulations). The submission of the priority document to the International Bureau is only required in those instances where priority is based on an earlier filed foreign national application. Thus, if the priority document is an earlier national application and did not accompany the international application when filed with the Receiving Office, an applicant must submit such document to the International Bureau not later than 16 months after the priority date. However, should an applicant request early processing of his international application in accordance with Article 23(2) of the Treaty, the priority document would have to be submitted to the International Bureau at that time (Rule 17.1(a) of the PCT Regulations). If priority is based on an earlier international application, a copy does not have to be filed, either with the Receiving Office or the International Bureau, since the latter is already in possession of such international application. The formal requirements for obtaining the right of priority under 35 U.S.C. 365 differ somewhat from those imposed by 35 U.S.C. 119(a)-(d), although the 1-year bar of 35 U.S.C. 102(b), as required by the last clause of section 119(a) is the same. However, the substantive right of priority is the same, in that it is derived from Article 4 of the Paris Convention for the Protection of Industrial Property (Article 8(2) of the Treaty). 35 U.S.C. 365(c) recognizes the benefit of the filing date of an earlier application under 35 U.S.C. 120. Any international application designating the United States, whether filed with a Receiving Office in this country or abroad, and even though other countries may have also been designated, has the effect of a regular national application in the United States, as of the international filing date. As such, any later filed national application, or international application designating the United States, may claim the benefit of the filing date of an earlier international application designating the United States, if the requirements and conditions of section 120 of title 35 U.S.C. are fulfilled. Under the same circumstances, the benefit of the earlier filing date of a national application may be obtained in a later filed international application designating the United States. In those instances, where the applicant relies on an international application designating, but not originating in, the United States the Commissioner may require submission of a copy of such application together with an English translation, since in some instances, and for various reasons, a copy of that international application or its translation may not otherwise be filed in the Patent and Trademark Office. Rule 17 The Priority Document 17.1. Obligation to Submit Copy of Earlier National or International Application (a) Where the priority of an earlier national or international application is claimed under Article 8, a copy of that earlier application, certified by the authority with which it was filed ("the priority document"), shall, unless already filed with the receiving Office together with the international application in which the priority claim is made, and subject to paragraph (b), be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date, provided that any copy of the said earlier application which is received by the International Bureau after the expiration of that time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the date of international publication of the international application. (b) Where the priority document is issued by the receiving Office, the applicant may, instead of submitting the priority document, request the receiving Office to prepare and transmit the priority document to the International Bureau. Such request shall be made not later than 16 months after the priority date and may be subjected by the receiving Office to the payment of a fee. (c) If the requirements of neither of the two preceding paragraphs are complied with, any designated State may disregard the priority claim, provided that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable under the circumstances. 17.2. Availability of Copies (a) Where the applicant has complied with Rule 17.1(a) or (b), the International Bureau shall, at the specific request of the designated Office, promptly but not prior to the international publication of the international application, furnish a copy of the priority document to that Office. No such Office shall ask the applicant himself to furnish it with a copy. The applicant shall not be required to furnish a translation to the designated Office before the expiration of the applicable time limit under Article 22. Where the applicant makes an express request to the designated Office under Article 23(2) prior to the international publication of the international application, the International Bureau shall, at the specific request of the designated Office, furnish a copy of the priority document to that Office promptly after receiving it. (b) The International Bureau shall not make copies of the priority document available to the public prior to the international publication of the international application. (c) Where the international application has been published under Article 21, the International Bureau shall furnish a copy of the priority document to any person upon request and subject to reimbursement of the cost unless, prior to that publication: (i) the international application was withdrawn, (ii) the relevant priority claim was withdrawn or considered, under Rule 26bis.2 not to have been made. (iii) [Deleted] (d) [Deleted] 37 CFR 1.451 The priority claim and priority document in an international application. (a) The claim for priority must, subject to paragraph (d) of this section, be made on the Request (PCT Rule 4.10) in a manner complying with sections 110 and 115 of the Administrative Instructions. (b) Whenever the priority of an earlier United States national application is claimed in an international application, the applicant may request in a letter of transmittal accompanying the international application upon filing with the United States Receiving Office or in a separate letter filed in the Receiving Office not later than 16 months after the priority date, that the Patent and Trademark Office prepare a certified copy of the national application for transmittal to the International Bureau (PCT Article 8 and PCT Rule 17). The fee for preparing a certified copy is stated in Section 1.19(b)(1). (c) If a certified copy of the priority document is not submitted together with the international application on filing, or, if the priority application was filed in the United States and a request and appropriate payment for preparation of such a certified copy do not accompany the international application on filing or are not filed within 16 months of the priority date, the certified copy of the priority document must be furnished by the applicant to the International Bureau or to the United States Receiving Office within the time limit specified in PCT Rule 17.1(a). (d) The applicant may correct or add a priority claim in accordance with PCT Rule 26 bis .1. ---SECTION---201.14 Right of Priority, Formal Requirements Under the statute (35 U.S.C. 119(b)), an applicant who wishes to secure the right of priority must comply with certain formal requirements within a time specified. If these requirements are not complied with the right of priority is lost and cannot thereafter be asserted. The requirements of the statute are (a) that the applicant must file a claim for the right and (b) he or she must also file a certified copy of the original foreign application; these papers must be filed within a certain time limit. The maximum time limit specified in the statute is that the claim for priority and the priority papers must be filed before the patent is granted, but the statute gives the Commissioner authority to set this time limit at an earlier time during the pendency of the application. Where a claim for priority under 35 U.S.C. 119(b) has not been made in the parent application, the claim for priority may be made in a continued prosecution application (CPA) filed under 37 CFR 1.53(d) or FWC application filed under former 37 CFR 1.62, provided the parent application has been filed within 12 months from the date of the earliest foreign filing. If the required papers are not filed within the time limit set the right of priority is lost. A reissue was granted in Brenner v. State of Israel, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119 before the patent was granted. It should be particularly noted that these papers must be filed in all cases even though they may not be necessary during the pendency of the application to overcome the date of any reference. The statute also gives the Commissioner authority to require a translation of the foreign documents if not in the English language and such other information as the Commissioner may deem necessary. 37 CFR 1.63 requires that the oath or declaration shall state in any application in which a claim for foreign priority is made pursuant to 37 CFR 1.55 must identify the foreign application for patent or inventors' certificate on which priority is claimed, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing. The requirements for recitation of foreign applications in the oath or declaration, while serving other purposes as well, are used in connection with the right of priority. ---SECTION---201.14(a) Right of Priority, Time for Filing Papers The time for filing the priority papers required by the statute is specified in 37 CFR 1.55(a). 37 CFR 1.55 Claim for foreign priority. (a) An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and 172. The claim to priority need be in no special form and may be made by the attorney or agent if the foreign application is referred to in the oath or declaration as required by Section 1.63. The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) must be filed in the case of an interference (Section 1.630), when necessary to overcome the date of a reference relied upon by the examiner, when specifically required by the examiner, and in all other situations, before the patent is granted. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must be accompanied by a petition requesting entry and by the fee set forth in Section 1.17(i). If the certified copy is not in the English language, a translation need not be filed except in the case of interference; or when necessary to overcome the date of a reference relied upon by the examiner; or when specifically required by the examiner, in which event an English language translation must be filed together with a statement that the translation of the certified copy is accurate. +++ It should first be noted that the Commissioner has by rule specified an earlier ultimate date than the date the patent is granted for filing a claim and a certified copy. The latest time at which the papers may be filed without petition is the date of the payment of the issue fee, except that, under certain circumstances, they are required at an earlier date. In all cases, the papers must be filed before the patent issues. These circumstances are specified in the rule as: (A) in the case of interferences in which event the papers must be filed within the time specified in the interference rules, (B) when necessary to overcome the date of a reference relied on by the examiner, and (C) when specifically required by the examiner. In view of the shortened periods for prosecution leading to allowances, it is recommended that priority papers be filed as early as possible. Although 37 CFR 1.55(a) permits the filing of priority papers up to and including the date for payment of the issue fee, it is advisable that such papers be filed promptly after filing the application. Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and there is not sufficient time to remedy the defect. Occasionally, a new oath or declaration may be necessary where the original oath or declaration omits the reference to the foreign filing date for which the benefit is claimed. The early filing of priority papers would thus be advantageous to applicants in that it would afford time to explain any inconsistencies that exist or to supply any additional documents that may be necessary. It is also suggested that a pencil notation of the application number of the corresponding U.S. application be placed on the priority papers. Such notation should be placed directly on the priority papers themselves even where a cover letter is attached bearing the U.S. application data. Experience indicates that cover letters and priority papers occasionally become separated, and without the suggested pencil notations on the priority papers, correlating them with the corresponding U.S. application becomes exceedingly difficult, frequently resulting in severe problems for both the Office and applicant. Adherence to the foregoing suggestion for making a pencil notation on the priority document of the U.S. application data will result in a substantial lessening of the problem. Priority papers filed after the date of payment of the issue fee will be accepted and acknowledged only if filed before the patent is granted and if a petition with fee (37 CFR 1.17(i)) pursuant to 37 CFR 1.55(a) is filed and granted. ---SECTION---201.14(b) Right of Priority, Papers Required The filing of the priority papers under 35 U.S.C. 119(a)-(d) makes the record of the file of the United States patent complete. The Patent and Trademark Office does not normally examine the papers to determine whether the applicant is in fact entitled to the right of priority and does not grant or refuse the right of priority, except as described in MPEP Section 201.15 and in cases of interferences. The papers required are the claim for priority and the certified copy of the foreign application. The claim to priority need be in no special form, and may be made by the attorney or agent at the time of transmitting the certified copy if the foreign application is the one referred to in the oath or declaration of the U.S. application. No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority. The claim for priority may appear in the oath or declaration with the recitation of the foreign application. The certified copy which must be filed is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information. "Application" in this connection is not considered to include formal papers such as a petition. A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed. A French patent stamped "Service De La Propriete Industrielle - Conforme Aux Pieces Deposees A L' Appui de La Demande" and additionally bearing a signed seal is also acceptable in lieu of a certified copy of the French application. When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner should make no examination of the papers except to see that they correspond in number, date and country to the application identified in the oath or declaration and contain no obvious formal defects. The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof. DURING INTERFERENCE If priority papers are filed in an interference, it is not necessary to file an additional certified copy in the application file. The administrative patent judge will place them in the application file. LATER FILED APPLICATIONS, REISSUES Where the benefit of a foreign filing date based on a foreign application is claimed in a later filed application (i.e., continuation, continuation-in-part, division) or in a reissue application and a certified copy of the foreign application as filed, has been filed in a parent or related application, it is not necessary to file an additional certified copy in the later application. A reminder of this provision is found in Form Paragraph 2.20. The applicant when making such claim for priority may simply identify the application containing the certified copy. In such cases, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP Section 707. If the applicant fails to call attention to the fact that the certified copy is in the parent or related application and the examiner is aware of the fact that a claim for priority under 35 U.S.C. 119(a)-(d) was made in the parent application, the examiner should call applicant's attention to these facts in an Office action, so that if a patent issues on the later or reissue application, the priority data will appear in the patent. In such cases, the language of Form Paragraph 2.20 should be used. 2.20 Priority Papers in Parent Application Applicant is reminded that in order for a patent issuing on the instant application to obtain the benefit of priority based on priority papers filed in parent Application No. [1] under 35 U.S.C. 119(a)-(d), a claim for such foreign priority must be made in this application. In making such claim, applicant may simply identify the application containing the priority papers. Where the benefit of a foreign filing date, based on a foreign application, is claimed in a later filed application or in a reissue application and a certified copy of the foreign application, as filed, has not been filed in a parent or related application, a claim for priority may be made in the later application. In re Tangsrud, 184 USPQ 746 (Comm'r Pat. 1973). When such a claim is made in the later application and a certified copy of the foreign application is placed therein, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP Section 707. WHERE AN ACTUAL MODEL WAS ORIGINALLY FILED IN GERMANY The German design statute does not permit an applicant having an establishment or domicile in the Federal Republic of Germany to file design patent applications with the German Patent Office. These German applicants can only obtain design protection by filing papers or an actual deposit of a model with the judicial authority ("Amtsgericht") of their principal establishment or domicile. Filing with the German Patent Office is exclusively reserved for applicants who have neither an establishment or domicile in the Federal Republic of Germany. The deposit in an "Amtsgericht" has the same effect as if deposited at the German Patent Office and results in a "Geschmacksmuster" which is effective throughout Germany. In implementing the Paris Convention, 35 U.S.C. 119(a)-(d) requires that a copy of the original foreign application, specification, and drawings certified by the patent office of the foreign country in which filed, shall be submitted to the Patent and Trademark Office, in order for an applicant to be entitled to the right of priority in the United States. Article 4, section A(2) of the Paris Convention however states that "(a)ny filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union . . . shall be recognized as giving rise to the right of priority." Article 4D(3) of the Convention further provides that countries of the Union may require any person making a declaration of priority to produce a copy of the previously filed application (description, drawings, etc.) certified as correct by the authority which received this application. As far as the physical production of a copy of the earlier filed paper application is concerned, an applicant should have no difficulty in providing a copy, certified by the authority which received it, if the earlier filed application contained drawings illustrating the design. A problem, however, arises when the only prior "regular national filing" consisted of the deposit of an actual model of the design. 35 U.S.C. 119(a)-(d) is silent on this subject. Therefore, the Patent and Trademark Office will receive as evidence of an earlier filed German design application under 35 U.S.C. 119(a)-(d), drawings or acceptable clear photographs of the deposited model faithfully reproducing the design embodied therein together with other required information, certified as being a true copy by an official of the court with which the model was originally deposited. 35 U.S.C. 119(a)-(d) also provides for the certification of the earlier filed application by the patent office of the foreign country in which it was filed. Because Article 4D(3) of the Paris Convention which 35 U.S.C. 119(a)-(d) implements refers to certification ". . . by the authority which received such application . . .", the reference to "patent office" in the statute is construed to extend also to the authority which is in charge of the design register, i.e., the applicable German court. As a consequence, an additional certification by the German Patent Office will not be necessary especially since Article 4D(3) of the Paris Convention provides that authentication shall not be required. Although, as stated above, a "regular national filing" gives rise to the right of priority, the mere submission of a certified copy of the earlier filed foreign application, however, may not be sufficient to perfect that right in this country. For example, among other things, an application filed in a foreign country must contain a disclosure of the invention adequate to satisfy the requirements of 35 U.S.C. 112, in order to form the basis for the right of priority in a later filed United States application. ---SECTION---201.14(c) Right of Priority, Practice Before going into the practice with respect to those instances in which the priority papers are used to overcome a reference, there will first be described the practice when there is no occasion to use the papers, which will be in the majority of cases. In what follows in this section it is assumed that no reference has been cited which requires the priority date to be overcome. NO IRREGULARITIES When the papers under 35 U.S.C. 119(a)-(d) are received they are to be endorsed on the contents page of the file as "Letter (or amendment) and foreign application". Assuming that the papers are regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of Form Paragraph 2.26. 2.26 Claimed Foreign Priority - Papers Filed Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file. Where the priority papers have been filed in another application, use Form Paragraph 2.27. 2.27 Acknowledge Foreign Priority Paper in Parent Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. [1], filed on [2]. Examiner Note: 1. For problems with foreign priority, see form paragraphs 2.18 to 2.24. 2. In bracket 1, insert series code and serial no. of parent. The examiner will enter the information specified in MPEP Section 202.03 on the face of the file wrapper or on the PALM bib-data sheet for 09/ series applications. PAPERS INCONSISTENT If the certified copy filed does not correspond to the foreign application identified in the application oath or declaration, or if the application oath or declaration does not refer to the particular foreign application, the applicant has not complied with the requirements of the rule relating to the oath or declaration. In such instances, the examiner's letter, after acknowledging receipt of the papers, should require the applicant to explain the inconsistency and to file a new oath or declaration stating correctly the facts concerning foreign applications required by 37 CFR 1.63 by using Form Paragraph 2.21. 2.21 Oath, Declaration Does Not Contain Reference to Foreign Filing Receipt is acknowledged of papers filed under 35 U.S.C. 119(a)-(d) based on an application filed in [1] on [2]. Applicant has not complied with the requirements of 37 CFR 1.63(c), since the oath or declaration does not acknowledge the filing of any foreign application. A new oath or declaration is required in the body of which the present application should be identified by application number and filing date. Other situations requiring some action by the examiner are exemplified by other Form Paragraphs. NO CLAIM FOR PRIORITY Where applicant has filed a certified copy but has not made a claim for priority, use Form Paragraph 2.22. 2.22 Certified Copy Filed, But No Claim Made Receipt is acknowledged of a certified copy of the [1] application referred to in the oath or declaration. If this copy is being filed to obtain the benefits of the foreign filing date under 35 U.S.C. 119(a)-(d), applicant should also file a claim for such priority as required by 35 U.S.C. 119(b). NOTE: Where the applicant's accompanying letter states that the certified copy is filed for priority purposes or for the convention date, it is accepted as a claim for priority. FOREIGN APPLICATIONS ALL MORE THAN A YEAR BEFORE EARLIEST EFFECTIVE U.S. FILING Where the earlier foreign application was filed more than 12 months prior to the U.S. application, use Form Paragraph 2.23. 2.23 Foreign Filing More Than 12 Months Earlier Acknowledgment is made of applicant's claim for priority under 35 U.S.C. 119(a)-(d) based upon an application filed in [1] on [2]. A claim for priority under 35 U.S.C. 119(a)-(d) cannot be based on said application, since the United States application was filed more than twelve months thereafter. SOME FOREIGN APPLICATIONS MORE THAN A YEAR BEFORE U.S. FILING For example, where a British provisional specification was filed more than a year before a U.S. application, but the British complete application was filed within the year, and certified copies of both were submitted, language similar to the following should be used: "Receipt is acknowledged of papers filed on September 18, 1979, purporting to comply with the requirements of 35 U.S.C. 119(a)-(d). It is not seen how the claim for priority can be based on the British specification filed January 23, 1978, because the instant application was filed more than one year thereafter. However, the printed heading of the patent will note the claimed priority date based on the complete specification; i.e., November 1, 1978, for such subject matter as was not disclosed in the provisional specification." CERTIFIED COPY NOT THE FIRST FOREIGN APPLICATION 2.24 Claimed Foreign Priority Date Not the Earliest Date Receipt is acknowledged of papers filed on [1] purporting to comply with the requirements of 35 U.S.C. 119(a)-(d) and they have been placed of record in the file. Attention is directed to the fact that the date for which foreign priority is claimed is not the date of the first filed foreign application acknowledged in the oath or declaration. NO CERTIFIED COPY Where priority is claimed but no certified copy of the foreign application has been filed, use Form Paragraph 2.25. 2.25 Claimed Foreign Priority, No Papers Filed Acknowledgment is made of applicant's claim for foreign priority based on an application filed in [1] on [2]. It is noted, however, that applicant has not filed a certified copy of the [3] application as required by 35 U.S.C. 119(b). Any unusual situation may be referred to the group director. APPLICATION IN ISSUE When priority papers for applications which have been sent to the Publishing Division are received, the priority papers should be sent to the Publishing Division. The Publishing Division will acknowledge receipt of all such priority papers. If the issue fee has been paid applicant must petition under 37 CFR 1.55(a). RETURN OF PAPERS It is sometimes necessary for the examiner to return papers filed under 35 U.S.C. 119(a)-(d) either upon request of the applicant, for example, to obtain a translation of the certified copy of the foreign application, or because they fail to meet a basic requirement of the statute, such as where all foreign applications were filed more than a year prior to the U.S. filing date. When the papers have not been given a paper number and endorsed on the file wrapper, it is not necessary to secure approval of the Commissioner for their return but they should be sent to the group director for cancellation of the Office stamps. Where the papers have been made of record in the file (given a paper number and endorsed on the file wrapper), a request for permission to return the papers should be addressed to the Commissioner of Patents and Trademarks and forwarded to the Group Director for approval. Where the return is approved, the written approval should be placed in the file wrapper. Any questions relating to the return of papers filed under 35 U.S.C. 119(a)-(d) should be directed to the Office of the Assistant Commissioner for Patents. FILLING OUT THE FOREIGN PRIORITY SECTION OF THE FILE WRAPPER LABEL (PTO-436L) Where foreign applications are listed on the 37 CFR 1.63 oath or declaration, the examiner should check that such foreign applications are properly listed on the file wrapper, correcting errors of typography or format as necessary, and initialing the "verified" line when the information on the file wrapper, matches the oath or declaration. See MPEP Section 202.03. Should there be an error on the oath or declaration itself, the examiner should require a new oath or declaration. If a foreign application listed on the oath or declaration is not listed on the file wrapper, the examiner should print in black ink the country, application number, and filing date under "Foreign/PCT Applications" on the file wrapper or on the PALM bib-data sheet. Applications listed on the file wrapper but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through in red ink. A listing of countries qualifying for benefits under 35 U.S.C. 119(a)-(d) appears at MPEP Section 201.13. Below the "Foreign/PCT applications" portion, the "yes" box for "Foreign priority claimed" should be checked only when priority has been properly claimed as provided in 37 CFR 1.55. Otherwise, the Examiner should check "no". Where a claim is made for one or more listed foreign applications and not for one or more other listed foreign applications, the data on the file wrapper concerning the unclaimed applications should be lined through in pencil and the "yes" box checked. The "yes" box for " 35 U.S.C. 119 conditions met" should be checked when there are any foreign applications listed that meet all of the requirements of 35 U.S.C. 119(a)-(d). In such cases, any listed foreign applica tion that does not meet all of the requirements of 35 U.S.C. 119(a)-(d) should be lined through in pencil. ---SECTION---201.14(d) Proper Identification of Priority Application In order to help overcome problems in determining the proper identification of priority applications for patent documentation and printing purposes, the following tables have been prepared which set out for various countries the forms of acceptable presentation of application numbers. The tables should enable applicants, examiners and others to extract from the various formats the minimum required data which comprises a proper citation. Proper identification of priority applications is essential to establishing accurate and complete relationships among various patent documents which reflect the same invention. Knowledge of these relationships is essential to search file management, technology documentation and various other purposes. The tables show the forms of presentation of application numbers as used in the records of the source or originating patent office. They also show, under the heading "Minimum Significant Part of the Number", the simplified form of presentation which should be used in United States Patent and Trademark Office records. Note particularly that in the simplified format that: (A) Alpha symbols preceding numerals are eliminated in all cases except Hungary. (B) A decimal character and numerical subset as part of a number is eliminated in all cases except France. (C) Use of the dash (-) is reduced, but is still an essential element of application numbers, in the case of Czechoslovakia and Japan. MINIMUM SIGNIFICANT PART OF AN APPLICATION NUMBER PROVIDING UNIQUE IDENTIFICATION OF AN APPLICATION Table I-Countries Using Annual Application Number Series Country # Example of application number at source Minimum significant part of the number Remarks Austria [AT] A 12116/69 12116/69 The letter A is common to all patent applications. Czechoslovakia [CS] PV3628-72 3628-72 PV is an abbreviation meaning "application of invention." Denmark [DK] 68/2986 68/2986 Egypt [EG] 487-1968 487-1968 Finland [FI] 3032/69 (old numbering system) 752032 (new numbering system) 3032/69 752032 New numbering system introduced on January 1, 1975. First two digits indicate year of application. France [FR] 69.38066 73 19346 68.38066 73 19346 Deletion of the intermediary full stop from this number onwards. Note: All French applications are numbered in a single annual series, e.g., demande de brevet, demande de certificate d'addition (first addition, second addition, etc.) Annual series of numbers is used for all applications of patent documents. The number allotted to an application at its filing (national registration number) is also the number of the granted patent. Germany, Fed. Rep. of [DE] P 1940738//6-24 G 6947580.5 1940738 * 6947580 P=Patent. The first two digits of the number represent the last two digits of the year of application less 50 (e.g., 1969 less 50=19; 1973 less 50=23). The first digit after the slash is an error control digit. The two digits following the dash indicate the examining division. G= Gebrauschsmuster. The first two digits of the number represent the last two digits of the year of application. The difference in numbering scheme of the first two digits affords unique identification of this type of application. However, see note below (*). The digit after the period is for error control. Ireland 1152/69 1152/69 Italy [IT] 28039-A/70 28039/70 Application numbers are not presented on published patent documents or given in an official gazette. An exclusive block of application numbers is given annually to each of 93 provincial bureaus where patent applications may be filed. In 1973, 90,000 numbers were allotted, wherein an estimated total of 30,000 applications were expected to be filed. While, as a consequence, gaps will exist in the ultimately used numbers, each application has a unique number. For this purpose, neither the dash nor the letter identifying the receiving bureau, which follows the application number, is needed. Japan [JP] 46-69807 46-81861 46-69807 *46-81861 The two digits before the dash indicate the year (1925 or 1988) of the Emperor's reign in which the application was filed (46=1971). Patent and utility model applications are numbered in separate series. Netherlands [NL] 7015038 7015038 First two digits indicate year of application. Norway [NO] 1748/70 (old numbering system) 74001 (new numbering system) 1748/70 74001 New numbering system introduced on January 1, 1974. First two digits indicate year of application. Table I-Countries Using Annual Application Number Series-Continued Country # Example of application number at source Minimum significant part of the number Remarks South Africa [ZA] 70/4865 70/4865 Sweden [SE] 16414/70 7300001-0 (new system) 16414/70 7300001 The new numbering system was introduced January 1, 1973. First two digits indicate year of application. The digit after the dash is used for computer control. Switzerland [CH] 15978/70 15978/70 United Kingdom [GB] 41352/70 41352/70 Yugoslavia [YU] P1135/66 1135/66 Zambia [ZM] 142/70 142/70 Argentina [AR] 231790 231790 Australia [AU] 59195/69 59195/69 Long series spread over several years. New series started in 1970. Belgium [BE] 96469 96469 Application numbers are not presented on published patent documents or given in an official gazette. A series of parallel numbers is provided to each of 10 offices which, respectively, may receive applications (control office + 9 provincial bureaus) and assign application numbers. Series was started in 1958. Since an application number does not uniquely identify a BE document, the patent number is often cited as the "priority application number." Brazil [BR] 222986 222986 Bulgaria [BG] 11572 11572 Canada [CA] 103828 103828 Colombia [CO] 126050 126050 Table II-Countries Using Other Than Application Number Series Country # Example of application number at source Minimum significant part of the number Remarks Brazil [BR] 222986 222986 Bulgaria [BG] 11572 11572 Canada [CA] 103828 103828 Colombia [CO] 126050 126050 Cuba [CU] 33384 33384 German (Dem. Rep.) [DD] AP84c/137355 WP135b/147203 137355 147203 AP=Ausschliessungspatent; WP=Wirtschaftspatent. The other symbols before the slash are classification symbols. A single numbering series covers both AP and WP applications. Greece [GR] 44114 44114 Table II-Countries Using Other Than Application Number Series-Continued Country # Example of application number at source Minimum significant part of the number Remarks Hungary [HU] OE 107 OE 107 The letters preceding the number are essential for identifying the application. They are the first letter and the first following vowel of the applicant's name. There is a separate numbering sequence for each pair of letters. Israel [IL] 35691 35691 Luxembourg [LU] 60093 60093 Mexico [MX] 123723 123723 Monaco [MC] 908 908 New Zealand [NZ] 161732 161732 OAPI [OA] 52118 52118 Philippines [PH] 11929 11929 Poland [PO] P144826 44987 144826 *449887 Portugal [PT] P52-555-5607 52555 *5607 Romania [RO] 65211 65211 Soviet Union 1397205-15 1397205 The numbers following the slash denote the examination division and a processing division. United States [US] 889877 889877 The highest number assigned in the series of numbers started in January 1960. New series started in January 1970, January 1979, and January 1987. # ICIREPAT Country Code is indicated in brackets, e.g., [AR]. * In order to distinguish utility model applications from patent applications, it is necessary to identify them as to type of application in citations or references. This may be done by using the name of the application type in conjunction with the number or by using the symbol "U" in brackets or other enclosure following the number. ---SECTION---201.15 Right of Priority, Overcoming a Reference The only times during ex parte prosecution that the examiner considers the merits of an applicant's claim of priority is when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States and when an interference situation is under consideration. If at the time of making an action the examiner has found such an intervening reference, he or she simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the papers have not yet been filed). The applicant in his or her reply may argue the rejection if it is of such a nature that it can be argued, or present the foreign papers for the purpose of overcoming the date of the reference. If the applicant argues the reference, the examiner, in the next action in the application, may specifically require the foreign papers to be filed in addition to repeating the rejection if it is still considered applicable, or he or she may merely continue the rejection. Form Paragraph 2.19 may be used in this instance. 2.19 Overcome Rejection by Translation Applicant cannot rely upon the foreign priority papers to overcome this rejection because a translation of said papers has not been made of record in accordance with 37 CFR 1.55. See MPEP Section 201.15. Examiner Note: This paragraph should follow a rejection based on an intervening reference. In those cases where the applicant files the foreign papers for the purpose of overcoming the effective date of a reference, a translation is required if the foreign papers are not in the English language. When the examiner requires the filing of the papers, the translation should also be required at the same time. This translation must be filed together with a statement that the translation of the certified copy is accurate. When the necessary papers are filed to overcome the date of the reference, the examiner's action, if he or she determines that the applicant is not entitled to the priority date, is to repeat the rejection on the reference, stating the reasons why the applicant is not considered entitled to the date. If it is determined that the applicant is entitled to the date, the rejection is withdrawn in view of the priority date. If the priority papers are already in the file when the examiner finds a reference with the intervening effective date, the examiner will study the papers, if they are in the English language, to determine if the applicant is entitled to their date. If the applicant is found to be entitled to the date, the reference is simply not used but may be cited to applicant on form PTO-892. If the applicant is found not entitled to the date, the unpatentable claims are rejected on the reference with an explanation. If the papers are not in the English language and there is no translation, the examiner may reject the unpatentable claims and at the same time require an English translation for the purpose of determining the applicant's right to rely on the foreign filing date. The foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant. In such cases, if the certified copy of the foreign application corresponds with the one identified in the oath or declaration as required by 37 CFR 1.63 and no discrepancies appear, it may be assumed that the inventors are entitled to the claim for priority. If there is disagreement as to inventors on the certified copy, the priority date should be refused until the inconsistency or disagreement is resolved. The most important aspect of the examiner's action pertaining to a right of priority is the determination of the identity of invention between the U.S. and the foreign applications. The foreign application may be considered in the same manner as if it had been filed in this country on the same date that it was filed in the foreign country, and the applicant is ordinarily entitled to any claims based on such foreign application that he or she would be entitled to under our laws and practice. The foreign application must be examined for the question of sufficiency of the disclosure under 35 U.S.C. 112, as well as to determine if there is a basis for the claims sought. In applications filed from the United Kingdom there may be submitted a certified copy of the "provisional specification," which may also in some cases be accompanied by a copy of the "complete specification." The nature and function of the United Kingdom provisional specification is described in an article in the Journal of the Patent Office Society of November 1936, pages 770-774. According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required. Consequently, in considering such provisional specifications, the question of completeness of disclosure is important. If it is found that the United Kingdom provisional specification is insufficient for lack of disclosure, reliance may then be had on the complete specification and its date, if one has been presented, the complete specification then being treated as a different application and disregarded as to the requirement to file within 1 year. In some instances, the specification and drawing of the foreign application may have been filed at a date subsequent to the filing of the petition in the foreign country. Even though the petition is called the application and the filing date of this petition is the filing date of the application in a particular country, the date accorded here is the date on which the specification and drawing were filed. It may occasionally happen that the U.S. application will be found entitled to the filing date of the foreign application with respect to some claims and not with respect to others. Occasionally a sole or joint applicant may rely on two or more different foreign applications and may be entitled to the filing date of one of them with respect to certain claims and to another with respect to other claims. ---SECTION---201.16 Using Certificate of Correction to Perfect Claim for Priority Under 35 U.S.C. 119(a)-(d) 35 U.S.C. 119 Benefit of Earlier Filing Date; Right of Priority. +++ (b) No application for patent shall be entitled to this right of priority unless a claim therefor and a certified copy of the original foreign application, specification and drawings upon which it is based are filed in the Patent and Trademark Office before the patent is granted... +++ The failure to perfect a claim to foreign priority benefit prior to issuance of the patent may be cured by filing a reissue application. Brenner v. State of Israel, 158 USPQ 584 (D.C. Cir. 1968). However, under certain conditions, this failure may also be cured by filing a Certificate of Correction request under 35 U.S.C. 255 and 37 CFR 1.323. For example, in the case of In re Van Esdonk, 187 USPQ 671 (Comm'r Pat. 1975), the Commissioner granted a request to issue a Certificate of Correction in order to perfect a claim to foreign priority benefits. In that case, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) had been satisfied. Accordingly, the Commissioner held that the "applicants' perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application." Although In re Van Esdonk involved the patent of a continuation application filed under former 37 CFR 1.60, it is proper to apply the holding of that case in similar factual circumstances to any patented application having benefits under 35 U.S.C. 120. This is primarily because a claim to foreign priority benefits in a continuing application, where the claim has been perfected in the parent application, constitutes in essence a mere affirmation of the applicant's previously expressed desire to receive benefits under 35 U.S.C. 119(a)-(d) for subject matter common to the foreign, parent, and continuing applications. In summary, a Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323 may be requested and issued in order to perfect a claim for foreign priority benefit in a patented continuing application if the requirements of 35 U.S.C. 119(a)-(d) had been satisfied in the parent application prior to issuance of the patent and the requirements of 37 CFR 1.55(a) are met. However, a claim to foreign priority benefits cannot be perfected via a Certificate of Correction if the requirements of 35 U.S.C. 119(a)-(d) had not been satisfied in the patented application, or its parent, prior to issuance and the requirements of 37 CFR 1.55(a) are not met. In this latter circumstance, the claim to foreign priority benefits can be perfected only by way of a reissue application in accordance with the rationale set forth in Brenner v. State of Israel, 158 USPQ 584. ---SECTION---202 Cross-Noting ---SECTION---202.01 In Specification 37 CFR 1.78 Claiming benefit of earlier filing date and cross references to other applications. (a)(1) A nonprovisional application may claim an invention disclosed in one or more prior filed copending nonprovisional applications or copending international applications designating the United States of America. In order for a nonprovisional application to claim the benefit of a prior filed copending nonprovisional application or copending international application designating the United States of America, each prior application must name as an inventor at least one inventor named in the later filed nonprovisional application and disclose the named inventor's invention claimed in at least one claim of the later filed nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior application must be: (i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States of America; or (ii) Complete as set forth in Section 1.51(b); or (iii) Entitled to a filing date as set forth in Section 1.53(b) or Section 1.53(d) and include the basic filing fee set forth in Section 1.16; or (iv) Entitled to a filing date as set forth in Section 1.53(b) and have paid therein the processing and retention fee set forth in Section 1.21(l) within the time period set forth in Section 1.53(f). (2) Except for a continued prosecution application filed under Section 1.53(d), any nonprovisional application claiming the benefit of one or more prior filed copending nonprovisional applications or international applications designating the United States of America must contain or be amended to contain in the first sentence of the specification following the title a reference to each such prior application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and indicating the relationship of the applications. The request for a continued prosecution application under Section 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior application. The identification of an application by application number under this section is the specific reference required by 35 U.S.C. 120 to every application assigned that application number. Cross-references to other related applications may be made when appropriate (see Section 1.14(a)). +++ Where an applicant in an application filed under 37 CFR 1.53(b) seeks to claim the benefit under 35 U.S.C. 120 or 121 of a continued prosecution application (CPA) filed under 37 CFR 1.53(d), 37 CFR 1.78(a)(2) requires a reference to the CPA by application number in the first sentence of such application. 37 CFR 1.78(a)(2) also provides that "[t]he identification of an application by application number under this section is the specific reference required by 35 U.S.C. 120 to every application assigned that application number." Thus, where a referenced CPA is in a chain of CPAs, this reference will constitute a reference under 35 U.S.C. 120 and 37 CFR 1.78(a)(2) to every CPA in the chain as well as the noncontinued prosecution application originally assigned such application number. Applicants are not permitted to delete such a claim for benefit under 35 U.S.C. 120 as to certain applications assigned that application number (e.g., for patent term purposes). There is seldom a reason for one application to refer to another application with no common applicant where the applications are not assigned to a common assignee. Such reference ordinarily should not be permitted. See also 37 CFR 1.79 and MPEP Section 201.11. ---SECTION---202.02 Notation on File Wrapper Regarding Prior U.S. Applications, Including Provisional Applications The heading of a printed patent includes all identifying parent data of continuation-in-part, continuation, divisional, substitute, and reissue applications, as well as any provisional application from which priority is claimed. Therefore, the identifying data of all parent or prior applications, when given in the specification must be inserted by the examiner in black ink on the file wrapper (for applications with the 09/ series, on the PALM bib-data sheet) in the case of a DIVISION, a CONTINUATION, a CONTINUATION-IN-PART and, whether given in the specification or not, in the case of a SUBSTITUTE application. Similarly, the application number of any provisional application from which priority is claimed should be printed on the file wrapper or on the PALM bib-data sheet for 09/ series applications. The heading of a printed patent issuing on a continued prosecution application (CPA) filed under 37 CFR 1.53(d) will identify the application number and filing date of the most recent noncontinued prosecution application (but not the filing date of the CPA) as well as all parent application data from which priority was claimed in the most recent noncontinued prosecution application. Where parent or prior application data, including provisional application data, is preprinted on the file wrapper or on the PALM bib-data sheet for 09/ series applications, the examiner should check that data for accuracy, including whether the application is, in fact, copending with the parent application or applications of which priority is claimed. Where the data is correct, the examiner should initial the file wrapper or the PALM bib-data sheet for 09/ series applications in the provided space. Should there be error in the preprinted parent application data, the application should be forwarded to the Office of Initial Patent Examination (OIPE) Customer Corrections for correction or entry of the data in the PALM data base, accompanied by a completed OIPE Data Base Routing Slip. For 09/ series applications, it will not be necessary to forward the application to OIPE for correction of the parent application data in PALM. The correction or entry of the data in the PALM data base can be made by technical support staff of the examining group. Upon entry of the data, a new PALM bib-data sheet should be printed and placed in the file wrapper. Only these terms should be used to specify the relationship between applications because of clarity and ease of printing. The status of the parent application, but not a provisional application, should also be indicated if it has been patented, abandoned, or published under either the Defensive Publication Program or the Trial Voluntary Protest Program. Note MPEP Section 1302.04(f). The "None" boxes must be marked when no parent or prior application information is present on the file wrappers containing such boxes. This should be done no later than the first action. The inclusion of parent or prior application information in the heading does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date. See MPEP Section 306 for work done by the Assignment Division pertaining to these particular types of applications. In the situation in which there has been no reference to a parent application because the benefit of its filing date is not desired, no notation as to the parent application is made on the face of the file wrapper or on the PALM bib-data sheet for 09/ series applications. ---SECTION---202.03 Notation on File Wrapper When Priority Is Claimed for Foreign Application In accordance with MPEP Section 201.14(c), the examiner will fill in the spaces concerning foreign applications on the face of the older file wrappers. The information to be written on the face of the file wrapper consists of the country, application date (filing date), and if available, the application and patent numbers. In some instances, the particular nature of the foreign application such as "utility model" (Germany (Gebrauchsmuster) and Japan) must be written in parentheses before the application number. For example: Application Number (utility model) B62854. At the present time the computer printed file wrapper labels (for 08/ or earlier series applications) or PALM bib-data sheet (for 09/ series applications) include the prior foreign application information. The examiner should check this information for accuracy. Should there be error, the examiner should make the appropriate corrections directly on the file wrapper or on the PALM bib-data sheet in black ink. The examiner should initial the file wrapper or the PALM bib-data sheet in the "VERIFIED" space provided when the information is correct or has been amended to be correct. However, the examiner must still indicate on the Office action and on the file wrapper or on the PALM bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) have been met. If the filing dates of several foreign applications are claimed (see MPEP Section 201.15, last paragraph) and satisfactory papers have been received for each, information respecting each of the foreign applications is to be entered on the face of the file wrapper or on the PALM bib-data sheet. The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the face of the file or the PALM bib-data sheet has been endorsed. ---SECTION---202.04 In Oath or Declaration As will be noted by reference to MPEP Section 201.14, 37 CFR 1.63 requires that the oath or declaration include certain information concerning applications filed in any foreign country. ---SECTION---202.05 In Case of Reissues 37 CFR 1.179 requires that a notice be placed in the file of an original patent for which an application for reissue has been filed. See MPEP Section 1431. ---SECTION---203 Status of Applications ---SECTION---203.01 New A "new" application is a nonprovisional one that has not yet received an action by the examiner. An amendment filed prior to the first Office Action does not alter the status of a "new" application. ---SECTION---203.02 Rejected A nonprovisional application which, during its prosecution in the examining group and before allowance, contains an unanswered examiner's action is designated as a "rejected" application. Its status as a "rejected" application continues as such until acted upon by the applicant in reply to the examiner's action (within the allotted reply period), or until it becomes abandoned. ---SECTION---203.03 Amended An "amended" or "old" nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner's action. The applicant's reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the application. ---SECTION---203.04 Allowed or in Issue An "allowed" nonprovisional application or an application "in issue" is one which, having been examined, is passed to issue as a patent, subject to payment of the issue fee. Its status as an "allowed" application continues from the date of the notice of allowance until it is withdrawn from issue or until it issues as a patent or becomes abandoned, as provided in 37 CFR 1.316. The files of allowed applications are kept in the Publishing Division. ---SECTION---203.05 Abandoned An abandoned application is, inter alia, one which is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant (acquiesced in by the assignee if there is one) or by the attorney or agent of record; (B) through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application; (C) for failure to pay the issue fee (MPEP Section 203.07, Section 711 to Section 711.05); or (D) in the case of a provisional application, no later than 12 months after the filing date of the provisional application (see MPEP Section 711.03(c) and 35 U.S.C. 111 (b) (5)). ---SECTION---203.06 Incomplete An application lacking some of the essential parts and not accepted for filing is termed an incomplete application. (MPEP Section 506, Section 506.01 and Section 601.01(d)-(g)). ---SECTION---203.07 Abandonment for Failure to Pay Issue Fee An allowed application in which the Issue Fee is not paid within 3 months after the Notice of Allowance in accordance with 35 U.S.C. 151 is abandoned for that reason (37 CFR 1.316). The issue fee may, however, be accepted by the Commissioner if on petition it is shown that the delay in payment was unavoidable and payment of the fee for delayed payment of the issue fee under 37 CFR 1.17(l), in which case the patent will issue as though no abandonment had occurred (MPEP Section 711.03(c)). (37 CFR 1.137(a)). The issue fee may also be accepted if on petition it is shown that the delay in payment was unintentional and upon payment of the fee for delayed payment of the issue fee under 37 CFR 1.17(m) (37 CFR 1.137(b)). ---SECTION---203.08 Status Inquiries NEW APPLICATION Current examining procedures now provide for the routine mailing from the examining groups of Form PTOL-37 in every case of allowance of an application. Thus, the mailing of a form PTOL-37 in addition to a formal Notice of Allowance (PTOL-85) in all allowed applications would seem to obviate the need for status inquiries even as a precautionary measure where the applicant may believe his or her new application may have been passed to issue on the first examination. However, as an exception, a status inquiry would be appropriate where a Notice of Allowance is not received within three months from receipt of form PTOL-37. Current examining procedures also aim to minimize the spread in dates among the various examiner dockets of each art unit and group with respect to actions on new applications. Accordingly, the dates of the "oldest new applications" appearing in the Official Gazette are fairly reliable guides as to the expected time frames of when the examiners reach the applications or action. Therefore, it should be rarely necessary to query the status of a new application. AMENDED APPLICATIONS Amended applications are expected to be taken up by the examiner and an action completed within two months of the date the examiner receives the application. Accordingly, a status inquiry is not in order after reply by the attorney until 5 or 6 months have elapsed with no response from the Office. A postcard receipt for replies to Office actions, adequately and specifically identifying the papers filed, will be considered prima facie proof of receipt of such papers. Where such proof indicates the timely filing of a reply, the submission of a copy of the postcard with a copy of the reply will ordinarily obviate the need for a petition to revive. Proof of receipt of a timely reply to a final action will obviate the need for a petition to revive only if the reply was in compliance with 37 CFR 1.113. IN GENERAL Status replies will be made by the Office technical support staff and will only indicate whether the application is awaiting action by the examiner or the applicant's reply to an Office action. In the latter instance the mailing date of the Office action will also be given. Inquiries as to the status of applications, by persons entitled to the information, should be answered promptly. Simple letters of inquiry regarding the status of applications will be transmitted from the Office of Initial Patent Examination, to the examining groups for direct action. Such letters will be stamped "Status Letters." If the correspondent is not entitled to the information, in view of 37 CFR 1.14, he or she should be so informed. For Congressional and other official inquiries, see MPEP Section 203.08(a). The original letter of inquiry regarding a pending or abandoned application should be made of record in the application and assigned a paper number. The reply to an inquiry which includes a self-addressed, postage-paid postcard should be made on the postcard without placing it in an envelope. The file record should also reflect, either on the original letter or in a separate paper, the nature of the reply to the inquiry and the date on which the reply was made. In cases of allowed applications, a memorandum should be attached to the inquiry with a statement of date it was forwarded to the Publishing Division. The memorandum and inquiry should then be sent to the Publishing Division. This Division will notify the inquirer of the date of the notice of allowance and the status of the application with respect to payment of the issue fee and abandonment for failure to pay the issue fee. In those instances where the letter of inquiry goes beyond mere matters of inquiry, it should not be marked as a "status letter". Such letters must be entered in the application file as a permanent part of the record. The inquiry should be answered by the examiner, however, and in a manner consistent with the provisions of 37 CFR 1.14. Another type of inquiry is to be distinguished from ordinary status letters. When a U.S. application is referred to in a foreign patent (for priority purposes, for example), inquiries as to the status of said application (abandoned, pending, patented) should be forwarded to the File Information Unit (MPEP Section 102). Telephone inquiries regarding the status of applications, by persons entitled to the information, should be directed to the group technical support personnel and not to the examiners. In as much as the official records and applications are located in the technical support section of the examining groups, the technical support personnel can readily provide status information without contacting the examiners. ---SECTION---203.08(a) Congressional and Other Official Inquiries Correspondence and inquiries from the White House, Members of Congress, embassies, and heads of Executive departments and agencies normally are cleared through the Office of the Administrator for Legislative and International Affairs. When persons from the designated official sources request services from the Office, or information regarding the business of the Office, they should, under long-standing instructions, be referred, at least initially, to the Congressional liaison in the Office of Legislative and International Affairs. This procedure is used so that there will be uniformity in the handling of contacts from the indicated sources, and also so that compliance with directives of the Department of Commerce is attained. Inquiries referred to in this section, particularly correspondence from Congress or the White House, should immediately be transmitted to the Administrator for Legislative and International Affairs by messenger, and the Congressional liaison in the Office of Legislative and International Affairs should be notified by phone that such correspondence has been received.