[Code of Federal Regulations] [Title 37, Volume 1] [Revised as of July 1, 1999] From the U.S. Government Printing Office via GPO Access [CITE: 37CFR1.53] [Page 35-39] TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS CHAPTER I--PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents Subpart B--National Processing Provisions Sec. 1.53 Application number, filing date, and completion of application. (a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes. (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 Sec. 1.71 and at least one claim pursuant to Sec. 1.75, and any drawing required by Sec. 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after [[Page 36]] 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 Sec. 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. (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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or Sec. 1.78 of any other application. No claim for priority under Sec. 1.78(a)(3) may be made in a design application based on a provisional application. No request under Sec. 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of Secs. 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications. (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 Sec. 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 Sec. 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: [[Page 37]] (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 Sec. 1.16; and (ii) Any additional Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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.'' (e) Failure to meet filing date requirements. (1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has [[Page 38]] been provided, and given a time period within which to correct the filing error. (2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph. Any petition under this paragraph must be accompanied by the fee set forth in Sec. 1.17(i) in an application filed under paragraphs (b) or (d) of this section, and the fee set forth in Sec. 1.17(q) in an application filed under paragraph (c) of this section. In the absence of a timely (Sec. 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected. (3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely (Sec. 1.181(f)) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in Sec. 1.21(n), will be refunded. (f) Completion of application subsequent to filing--Nonprovisional (including continued prosecution) application. If an application which has been accorded a filing date pursuant to paragraph (b) of this section, including a continuation, divisional, or continuation-in-part application, does not include the appropriate filing fee or an oath or declaration by the applicant pursuant to Sec. 1.63 or Sec. 1.175, or, if an application which has been accorded a filing date pursuant to paragraph (d) of this section does not include the appropriate filing fee, applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to file the fee, oath or declaration, and the surcharge as set forth in Sec. 1.16(e) in order to prevent abandonment of the application. See Sec. 1.63(d) concerning the submission of a copy of the oath or declaration from the prior application for a continuation or divisional application. If the required filing fee is not timely paid, or if the processing and retention fee set forth in Sec. 1.21(l) is not paid within one year of the date of mailing of the notification required by this paragraph, the application may be disposed of. The notification pursuant to this paragraph may be made simultaneously with any notification pursuant to paragraph (e) of this section. If no correspondence address is included in the application, applicant has two months from the filing date to file the basic filing fee, the oath or declaration in an application under paragraph (b) of this section, and the surcharge as set forth in Sec. 1.16(e) in order to prevent abandonment of the application; or, if no basic filing fee has been paid, one year from the filing date to pay the processing and retention fee set forth in Sec. 1.21(l) to prevent disposal of the application. (g) Completion of application subsequent to filing--Provisional application. If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the appropriate filing fee or the cover sheet required by Sec. 1.51(c)(1), applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to file the fee, cover sheet, and the surcharge as set forth in Sec. 1.16(l) in order to prevent abandonment of the application. If the required filing fee is not timely paid, the application may be disposed of. The notification pursuant to this paragraph may be made simultaneously with any notification pursuant to paragraph (e) of this section. If no correspondence address is included in the application, applicant has two months from the filing date to file the basic filing fee, cover sheet, and the surcharge as set forth in Sec. 1.16(l) in order to prevent abandonment of the application. (h) Subsequent treatment of application--Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts, complying [[Page 39]] with the rules relating thereto, are received, except that certain minor informalities may be waived subject to subsequent correction whenever required. (i) Subsequent treatment of application--Provisional application. A provisional application for a patent filed under paragraph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1). (j) Filing date of international application. The filing date of an international application designating the United States of America is treated as the filing date in the United States of America under PCT Article 11(3), except as provided in 35 U.S.C. 102(e). [62 FR 53186, Oct. 10, 1997, as amended at 63 FR 5734, Feb. 4, 1998]