Editing MPEP 201

<noinclude>{{MPEP Section||200|202}}</noinclude>

==[[MPEP 201|201 Types of Applications]]== 

<noinclude><div class="noautonum">__TOC__</div></noinclude>

{{Statute|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 Director.

(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 
Director.

(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 Director 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 Director. 
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 Director.

(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 Director 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.—Notwithstanding the absence of 
a claim, upon timely request and as prescribed by the Director, a 
provisional application may be treated as an application filed 
under subsection (a). Subject to section 119(e)(3) of this title, if no 
such request is made, the provisional application shall be regarded 
as abandoned 12 months after the filing date of such application 
and shall not be subject to revival after such 12-month period.

(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 Director, 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.
|}

{{Statute|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 a national application 
under 35 U.S.C. 111 and a national stage application 
(a national application which entered the national 
stage from an international application after compliance 
with 35 U.S.C. 371) are similar but not identical. 
Note the following examples:

(A)Restriction practice under MPEP § 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.

(B)National nonprovisional applications filed 
under 35 U.S.C. 111(a) without an executed oath or 
declaration , basic filing fee, search fee, or 
examination fee are governed by the notification 
practice set forth in 37 CFR 1.53(f) while national 
stage applications filed without an oath or declaration 
or national stage fee are governed by the notification 
practice set forth in 37 CFR 1.495.

37 CFR 1.9(a)(1) defines a national application as a 
U.S. application 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. Domestic national patent 
applications fall under three broad types: 

(A)applications for patent under 35 U.S.C. 101relating 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 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 1500and 1600, respectively. Domestic 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), only applicable if the 
application is for a design patent) and continuation-in-
part applications (which may be filed under 37 CFR 
1.53(b)).

===201.01 Sole===

An application wherein the invention is presented 
as that of a single person is termed a sole application.

===201.02 Joint===

A joint application is one in which the invention is 
presented as that of two or more persons. See MPEP 
§ 605.07.

===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 
request 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 a first 
executed oath or declaration under 37 CFR 1.63 by 
any of the inventors 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 request under 
37 
CFR 1.48, either in the application containing the 
inventorship err(using a copy of the executed oath or 
declaration from the parent application)or (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, the name of at least one correct 
inventor must be set forth in the application papers 
pursuant to 37 CFR 1.41(a)(1). Where the name of at 
least one inventor is 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 continuation or divisional
application (using a copy of the executed oath or 
declaration from the parent application) with a 
request for deletion of the name of the inventor(s). 
See 37 CFR 1.63(d)(2). If a continuing application is 
filed with a new executed oath or declaration properly 
naming the correct inventors, a request for deletion of 
the name(s) of the person(s) who are not inventors in 
the continuing application is not necessary. The continuing 
application may be filed under 37 
CFR 
1.53(b) or, if the application is for a design patent, 
under 37 CFR 1.53(d). Note the requirements of 37 
CFR 1.78 (a)(1)(ii). 

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 subsections V. and VI. 
below.

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 § 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 
in a patent is to be corrected via a reissue 
application, see MPEP § 1412.04. Where such an 
error is to be corrected via a certificate of correction 
under 37 CFR 1.324, see MPEP § 1481.

Where a request 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 request under 37 CFR 1.48has 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 request, 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 request under 37 CFR 1.48, 
if the request 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 request under 
37 CFR 1.48 is granted, then it would not be necessary 
to withdraw the application from issue. 

Requests 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 which, as of the date 
of filing of the request, has not been accepted as satisfying 
the requirements for entry into the national 
stage (decided in the PCT Legal Office); and 

(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).

The grant or denial of a request 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 § 1481. 

A request 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. See MPEP 
§ 605.04(g). Reference to the notification will be 
made on the previously filed oath or declaration;

(C)Where an inventor’s name has been changed 
after the application has been filed, see MPEP 
§ 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  form PTO/
SB/44 (see MPEP § 1485). A new oath or declaration 
under 37 CFR 1.63 is not required;

(E)Where there is no change of individual but an 
incorrect name was given, a petition under 37 CFR 
1.182 should be filed requesting correction of applicant’s 
name;

(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). 

'''I.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 request under 37 CFR 
1.48(a), (b), or (c) 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 request under 
37 CFR 1.48(a) or (c) must also be submitted. 

The original named inventors should not execute or 
submit an oath or declaration under 37 CFR 1.63merely 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, nor should the oath or declaration 
be 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). See MPEP § 710.02(d).

Example

A nonprovisional application is filed (either prior 
to, on or after December 1, 1997) naming A as the 
sole inventor without an executed oath or declaration 
under 37 CFR 1.63. Only claim 1 is presented.

A "Notice to File Missing Parts of Application" is 
mailed to the applicant requiring an oath or declaration 
under 37 CFR 1.63. 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 request 
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 request under 
37 
CFR 1.48(b) would not be necessary.

II.37 CFR 1.48(a)

{{Statute|37 CFR 1.48. Correction of inventorship in a patent application, other than a reissue application, pursuant to 35. U.S.C. 116.}}

(a) Nonprovisional application after oath/declaration filed. 
If the inventive entity is set forth in error in an executed § 1.63oath or declaration in a nonprovisional 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 inventorship of 
the nonprovisional application may be amended to name only the 
actual inventor or inventors. Amendment of the inventorship 
requires:

(1) A request to correct the inventorship that sets forth the 
desired inventorship change;

(2) 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;

(3) An oath or declaration by the actual inventor or inventors 
as required by § 1.63 or as permitted by §§ 1.42, 1.43 or 
§ 1.47;

(4) The processing fee set forth in § 1.17(i); and

(5) If an assignment has been executed by any of the original 
named inventors, the written consent of the assignee (see 
§ 3.73(b) of this chapter).
|}

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 request to correct the inventorship 
that sets forth the desired inventorship change; 
(2) 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; (3) 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; (4) the fee set 
forth in 37 CFR 1.17 (i); and (5) 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 requesting 
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 benefit 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 processing 
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 
§ 410).

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 request 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 request under 37 CFR 1.48(a)
would not then be required in the newly filed application 
as no correction would be needed. Furthermore, a 
request 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)(2) 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)(2) 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 a petition under 37 CFR 
1.47 and a request under 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 petition and the request. In those 
instances wherein a request under 37 CFR 1.48(a) and 
a petition under 37 CFR 1.47 have both been filed in 
an application, the Office of Petitions may first issue a 
decision on the request 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 § 601.01(a) and § 602. 

C.Fee

 Where waiver under 37 CFR 1.183 is requested in 
relation to a requirement under 37 CFR 1.48(a), a processing 
fee under 37 CFR 1.48(a) and a petition fee 
under 37 CFR 1.183 are required. Similarly, where in 
addition to a request 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 fees are 
required (one for the request filed under 37 CFR 1.48and two for the petitions filed under 37 CFR 1.183).

Where a similar error has occurred in more than 
one application a separate processing fee must be submitted 
in each application in which correction is 
requested.

If the processing fee has not been submitted or 
authorized the request 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)(5). 37 CFR 1.48(a) does not limit 
assignees to those who are recorded in the U.S. Patent 
and Trademark Office records. The Office employee 
deciding the request should check the file record for 
any indication of the existence of an assignee (e.g., a 
small entity assertion from an assignee).

Where no assignee exists requester should affirmatively 
state that fact. If the file record including the 
request 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 
requesters 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 assertion, it 
is also acceptable. Further, the assignee must establish 
its ownership of the application in accordance with 
37 CFR 3.73. MPEP § 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 request 
under 37 CFR 1.48(b) was filed requesting deletion 
of inventor B. The request 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) it should not be assumed that an error in 
inventorship made in a parent application was in fact 
corrected therein in response to a request under 
37 CFR 1.48(a) unless a decision from the U.S. Patent 
and Trademark Office to that effect was received by 
the requester. 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 benefit under 35 U.S.C. 120 without 
the need for a decision on the request 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 request 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 a 
continuation or divisional 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).

In a continued prosecution application (CPA) filed 
under 37 CFR 1.53(d), a request under 37 CFR 
1.48(a) or (c) 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 request is granted, the inventorship remains 
the same as the prior application. Note, however, that 
effective July 14, 2003, CPA practice has been eliminated 
as to utility and plant applications. If the application 
is a design application, 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, it is important to recognize that 37 CFR 
1.78 requires for purposes of claiming the benefit of 
the prior application 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). Effective July 1, 2005, the 
processing and retention fee (37 CFR 1.21(l)) practice 
has been eliminated. The basic filing fee (rather than 
just the processing and retention fee set forth in 
former 37 CFR 1.21(l)) must be paid within the pendency 
of a nonprovisional application in order to permit 
benefit of the application to be claimed under 35 
U.S.C. 120, 121, or 365(c) in a subsequent nonprovisional 
or international application. See 37 CFR 
1.78(a)(1)(ii).

Should a continuation or divisional application 
be filed 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 if the prior 
application is a design application) purporting 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 request 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 request under 37 
CFR 1.48(a) in the continuation or divisional
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 continuation or 
divisional 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 request 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 request 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 
benefit 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 1.497(d). See MPEP § 1893.01(e). 

III.37 CFR 1.48(b)

{{Statute|37 CFR 1.48. Correction of inventorship in a patent application, other than a reissue application, pursuant to 35. U.S.C. 116.}}
{{Ellipsis}}
(b) Nonprovisional application—fewer inventors due to 
amendment or cancellation of claims. If the correct inventors are 
named in a nonprovisional application, and the prosecution of the 
nonprovisional 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 
nonprovisional application, an amendment must be filed requesting 
deletion of the name or names of the person or persons who 
are not inventors of the invention being claimed. Amendment of 
the inventorship requires:

(1) A request, signed by a party set forth in § 1.33(b), to 
correct the inventorship that identifies the named inventor or 
inventors being deleted and acknowledges that the inventor's 
invention is no longer being claimed in the nonprovisional application; 
and

(2)The processing fee set forth in § 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 request 
under 37 CFR 1.48(b) to delete an inventor would be 
appropriate prior to an action by the TC 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 request 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 
requests filed under 37 CFR 1.48(b).

IV.37 CFR 1.48(c)

{{Statute|37 CFR 1.48. Correction of inventorship in a patent application, other than a reissue application, pursuant to 35. U.S.C. 116.}} 
{{Ellipsis}}
(c)Nonprovisional application—inventors added for claims 
to previously unclaimed subject matter. If a nonprovisional 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. Amendment of the inventorship requires:

(1)A request to correct the inventorship that sets forth the 
desired inventorship change;

(2)A statement from each person being added as an 
inventor that the addition is necessitated by amendment of the 
claims and that the inventorship error occurred without deceptive 
intention on his or her part;

(3)An oath or declaration by the actual inventors as 
required by § 1.63 or as permitted by §§ 1.42, 1.43, or § 1.47;

(4)The processing fee set forth in § 1.17(i); and

(5)If an assignment has been executed by any of the original 
named inventors, the written consent of the assignee (see 
§ 3.73(b) of this chapter).
|}

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 request to correct the inventorship 
that sets forth the desired inventorship change; 
(2) 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; (3) an oath or declaration by each actual 
inventor; (4) the fee under 37 CFR 1.17(i); and (5) the 
written consent of any assignee of the original named 
inventors.

V.37 CFR 1.48(d)

{{Statute|37 CFR 1.48. Correction of inventorship in a patent application, other than a reissue application, pursuant to 35. U.S.C. 116.}}
{{Ellipsis}}
(d)Provisional application—adding omitted inventors. 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. Amendment of the inventorship 
requires:

(1)A request, signed by a party set forth in § 1.33(b), to 
correct the inventorship that identifies the inventor or inventors 
being added and states that the inventorship error occurred without 
deceptive intention on the part of the omitted inventor or 
inventors; and

(2)The processing fee set forth in § 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 request to correct the inventorship 
that sets forth the desired inventorship change; 
(2) a statement that the inventorship error occurred 
without deceptive intention on the part of the omitted 
inventor or inventors; and (3) the fee set forth in 
37 
CFR 1.17(q). The statement of lack of deceptive 
intent may be included in the request and may be 
signed by a registered attorney or agent. A statement 
of lack of deceptive intent is not required from any of 
the original or to be added inventors.

See also discussion below regarding requests filed 
under 37 CFR 1.48(e).

VI.37 CFR 1.48(e)

{{Statute|37 CFR 1.48. Correction of inventorship in a patent application, other than a reissue application, pursuant to 35. U.S.C. 116.}}
{{Ellipsis}}
(e)Provisional application—deleting the name or names of 
the inventor or inventors. 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. Amendment of the inventorship requires:

(1)A request to correct the inventorship that sets forth the 
desired inventorship change;

(2)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;

(3)The processing fee set forth in § 1.17(q); and

(4)If an assignment has been executed by any of the original 
named inventors, the written consent of the assignee (see 
§ 3.73(b) of this chapter).
|}

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. 

37 CFR 1.48(e) requires that the amendment be 
accompanied by: (1) a request to correct the inventorship 
that sets forth the desired inventorship change; 
(2) 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; (3) the fee set forth in 37 CFR 1.17(q); and 
(4) the written consent of any assignee.

Under 35 U.S.C. 119(e), as contained in Public 
Law 103-465, a later filed nonprovisional application 
under 35 U.S.C. 111(a) that is filed within twelve 
months of an earlier provisional application may 
claim benefits based on the earlier filed provisional 
application so long as both applications have at least 
one inventor in common. An error in not naming or in 
naming a person as an inventor in a provisional application 
would not require correction under either 
37 CFR 1.48(d) (to add an inventor) or 37 CFR 
1.48(e) (to delete an inventor) in the provisional application 
so long as the nonprovisional application naming 
the correct inventorship would contain an overlap 
of at least one inventor with the provisional application. 
The existence of inventorship overlap would prevent 
the original inventorship error from having any 
effect upon the ability of the provisional application to 
serve as a basis for a benefit claim under 35 
U.S.C. 
119(e) with the U.S. Patent and Trademark Office.

If, however, applicant chooses to correct the inventive 
entity of a provisional application, for example, 
to permit the provisional application to serve as the 
basis of a priority claim in a foreign country, 37 CFR 
1.48(d) and (e) set forth the procedures for adding one 
or more actual inventors and for deleting one or more 
erroneously named inventors respectively.

In the situation where an inventor was not named in 
a provisional application and an inventor was also 
erroneously named in the same provisional application 
and correction is desired, a request under 37 CFR 
1.48(d) and a request under 37 CFR 1.48(e) would be 
required.

Where an inventorship error in a provisional application 
is desired to be corrected after expiration of 
twelve months from the filing date of the provisional 
application, a request under 37 CFR 1.48(d) and/or 
37 
CFR 1.48(e) may still be filed with OIPE, which 
handles requests under 37 CFR 1.48(d) and (e), to 
correct the inventorship in provisional applications.

VII.37 CFR 1.48(f)

{{Statute|37 CFR 1.48. Correction of inventorship in a patent application, other than a reissue application, pursuant to 35. U.S.C. 116.}}
{{Ellipsis}}
(f)(1) Nonprovisional application—filing executed oath/declaration 
corrects inventorship. If the correct inventor or inventors 
are not named on filing a nonprovisional application under 
§ 1.53(b) without an executed oath or declaration under § 1.63 by 
any of the inventors, the first submission of an executed oath or 
declaration under § 1.63 by any of the inventors during the pendency 
of the application will act to correct the earlier identification 
of inventorship. See §§ 1.41(a)(4) and 1.497(d) and (f) for 
submission of an executed oath or declaration to enter the national 
stage under 35 U.S.C. 371 naming an inventive entity different 
from the inventive entity set forth in the international stage.

(2)Provisional application filing cover sheet corrects 
inventorship. If the correct inventor or inventors are not named on 
filing a provisional application without a cover sheet under 
§ 1.51(c)(1), the later submission of a cover sheet under 
§ 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 
request and fee is not required for the inventorship 
correction to occur.

The provision in 37 CFR 1.48(f)(1) for changing 
the inventorship only applies if an executed oath or 
declaration under 37 CFR 1.63 has not been submitted 
by any of the inventors. In this situation, the submission 
of an executed oath or declaration under 37 CFR 
1.63 by any of the inventors is sufficient to correct an 
earlier identification of inventorship. A first-filed oath 
or declaration under 37 CFR 1.63 executed by less 
than all of the inventors initially identified will, under 
37 CFR 1.48(f)(1), determine the inventorship in the 
application. Any subsequent oath or declaration filed 
by a different inventive entity will not be effective 
under 37 CFR 1.48(f)(1) to correct the inventorship 
that was specified in the first-filed oath or declaration.

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 
requirements of 37 CFR 1.497(d) must be satisfied. 
See MPEP § 1893.01(e).

VIII.37 CFR 1.48(g)

{{Statute|37 CFR 1.48. Correction of inventorship in a patent application, other than a reissue application, pursuant to 35. U.S.C. 116.}}
{{Ellipsis}}
(g)Additional information may be required. The Office may 
require such other information as may be deemed appropriate 
under the particular circumstances surrounding the correction of 
inventorship.
|}

===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.

====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.

====201.04(b) Provisional Application====

{{Statute|35 U.S.C. 111. Application.}}
{{Ellipsis}}
(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 Director. 
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 Director.

(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 Director 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.—Notwithstanding the absence of 
a claim, upon timely request and as prescribed by the Director, a 
provisional application may be treated as an application filed 
under subsection (a). Subject to section 119(e)(3) of this title, if no 
such request is made, the provisional application shall be regarded 
as abandoned 12 months after the filing date of such application 
and shall not be subject to revival after such 12-month period.

(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 Director, 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.
|}

{{Statute|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.
|}

{{Statute|37 CFR 1.53. Application number, filing date, and completion of application.}}
{{Ellipsis}}
(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 § 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 § 1.51(c)(1), which may be an application data 
sheet (§ 1.76), 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. The grant of such a request for conversion 
will not entitle applicant to a refund of the fees that were 
properly paid in the application filed under paragraph (b) of this 
section. Such a request for conversion must be accompanied by 
the processing fee set forth in § 1.17(q) and be filed prior to the 
earliest of:

(i)Abandonment of the application filed under paragraph 
(b) of this section;

(ii)Payment of the issue fee on the application filed 
under paragraph (b) of this section;

(iii)Expiration of twelve months after the filing date of 
the application filed under paragraph (b) of this section; or

(iv)The filing of a request for a statutory invention 
registration under § 1.293 in the application filed under paragraph 
(b) of this section.

(3)A provisional application filed under paragraph (c) of 
this section may be converted to a nonprovisional application filed 
under paragraph (b) of this section and accorded the original filing 
date of the provisional application. The conversion of a provisional 
application to a nonprovisional application will not result in 
either the refund of any fee properly paid in the provisional application 
or the application of any such fee to the filing fee, or any 
other fee, for the nonprovisional application. Conversion of a provisional 
application to a nonprovisional application under this 
paragraph will result in the term of any patent to issue from the 
application being measured from at least the filing date of the provisional 
application for which conversion is requested. Thus, 
applicants should consider avoiding this adverse patent term 
impact by filing a nonprovisional application claiming the benefit 
of the provisional application under 35 U.S.C. 119(e) (rather than 
converting the provisional application into a nonprovisional application 
pursuant to this paragraph). A request to convert a provisional 
application to a nonprovisional application must be 
accompanied by the fee set forth in § 1.17(i) and an amendment 
including at least one claim as prescribed by the second paragraph 
of 35 
U.S.C. 112, unless the provisional application under paragraph 
(c) of this section otherwise contains at least one claim as 
prescribed by the second paragraph of 35 U.S.C.112. The nonprovisional 
application resulting from conversion of a provisional 
application must also include the filing fee, search fee, and examination 
fee for a nonprovisional application, an oath or declaration 
by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and the surcharge 
required by § 1.16(f) if either the basic filing fee for a nonprovisional 
application or the oath or declaration was not present 
on the filing date accorded the resulting nonprovisional application 
(i.e., the filing date of the original provisional application). A 
request to convert a provisional application to a nonprovisional 
application must also be filed prior to the earliest of:

(i)Abandonment of the provisional application filed 
under paragraph (c) of this section; or

(ii)Expiration of twelve months after the filing date of 
the provisional application filed under paragraph (c) of this section.

(4)A provisional application is not entitled to the right of 
priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit 
of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or 
§ 1.78 of any other application. No claim for priority under 
35 U.S.C. 119(e) or § 1.78(a)(4) may be made in a design application 
based on a provisional application. No request under § 1.293 for a statutory invention registration may be filed in a provisional 
application. The requirements of §§ 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 (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.

A provisional application is a regular national filing 
that starts the Paris Convention priority year. Foreign 
filings must be made within 12 months of the 
filing date of the provisional application if applicant 
wishes to rely on the filing date of the provisional 
application in the foreign filed application.

The parts of a provisional application that are 
required are set forth in 37 CFR 1.51(c) and MPEP 
§ 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(d). 

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. See 35 U.S.C. 111(b)(5). Public Law 106-
113 amended 35 
U.S.C. 119(e)(3) to extend the period 
of pendency of a provisional application to the next 
succeeding business day if the day that is 12 months 
after the filing date of a provisional application falls 
on a Saturday, Sunday, or Federal holiday within the 
District of Columbia. See also 37 CFR 1.7(b). 
35 
U.S.C. 119(e)(3) as amended by Public Law 106-
113 is effective as of November 29, 1999 and applies 
to any provisional applications filed on or after June 
8, 1995 but has no effect on any patent which is the 
subject of litigation in an action commenced before 
November 29, 1999. 

For example, if a provisional application was filed 
on January 15, 1999, the last day of pendency of the 
provisional application under 35 U.S.C. 111(b)(5) and 
35 U.S.C. 119(e)(3) is extended to January 18, 2000 
(January 15, 2000 is a Saturday and Monday, January 
17, 2000 is a Federal holiday and therefore, the next 
succeeding business day is Tuesday, January 18, 
2000). A nonprovisional application claiming the benefit 
of the provisional application must be filed no 
later than January 18, 2000.

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. If applicant attempts 
to claim the benefit of an earlier U.S. or foreign application 
in a provisional application, the filing receipt 
will not reflect the improper benefit or priority claim. 
Moreover, if a nonprovisional application claims the 
benefit of the filing date of a provisional application, 
and states that the provisional application relies upon 
the filing date of an earlier application, the claim for 
benefit or priority earlier than the filing date of the 
provisional application will be disregarded.

An application filed under 37 CFR 1.53(b) may be 
converted to a provisional application provided a 
request for conversion is submitted along with the fee 
as set forth in 37 CFR 1.17(q). The request 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 request will not entitle applicant 
to a refund of the fees which were properly paid 
in the application filed under 37 CFR 1.53(b). See 
MPEP § 601.01(c)

Public Law 106-113 amended 35 U.S.C. 111(b)(5) 
to permit a provisional application filed under 37 CFR 
1.53(c) be converted to a nonprovisional application 
filed under 37 CFR 1.53(b). 35 U.S.C. 111(b)(5) as 
amended by Public Law 106-113 is effective as of 
November 29, 1999 and applies to any provisional 
applications filed on or after June 8, 1995. A request 
to convert a provisional application to a nonprovisional 
application must be accompanied by the fee set 
forth in 37 CFR 1.17(i) and an amendment including 
at least one claim as prescribed by 35 U.S.C. 112, 
unless the provisional application otherwise contains 
at least one such claim. The request must be filed 
prior to the earliest of the abandonment of the provisional 
application or the expiration of twelve months 
after the filing date of the provisional application. The 
filing fee for a nonprovisional application, an executed 
oath or declaration under 37 CFR 1.63, and the 
surcharge under 37 CFR 1.16(f), if appropriate, are 
also required. The grant of any such request will not 
entitle applicant to a refund of the fees which were 
properly paid in the application filed under 37 CFR 
1.53(c). Conversion of a provisional application to a 
nonprovisional application will result in the term of 
any patent issuing from the application being measured 
from at least the filing date of the provisional 
application. This adverse patent term impact can be 
avoided by filing a nonprovisional application claiming 
the benefit of the provisional application under 
35 
U.S.C. 119(e), rather than requesting conversion of 
the provisional application to a nonprovisional application. 
See 37 CFR 1.53(c)(3).

Design applications may not make a claim for priority 
of a provisional application under 35 U.S.C. 
119(e). See 35 U.S.C. 172 and 37 CFR 1.78(a)(4).

===201.05 Reissue Application===

A reissue application is an application for a patent 
to take the place of an unexpired patent that is defective 
as a result of an error in the patent which was 
made without deceptive intention. A detailed treatment 
of reissue applications can be found in 
Chapter 1400.

===201.06 Divisional 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.” A divisional application 
is often filed as a result of a restriction 
requirement made by the examiner. The divisional 
application must claim the benefit of the prior nonprovisional 
application under 35 U.S.C. 121 or 365(c). 
See MPEP § 201.11 for the conditions for receiving 
the benefit of the filing date of the prior application. 
The divisional application should set forth at least the 
portion of the earlier disclosure that is germane to the 
invention as claimed in the divisional application.

Divisional applications of utility or plant applications 
must be filed under 37 CFR 1.53(b). Divisional 
applications of design applications 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.

Effective July 14, 2003, continued prosecution 
application (CPA) practice set forth in 37 CFR 1.53(d) 
has been eliminated as to utility and plant applications. 
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 U.S. Patent and Trademark 
Office classification of the divisional application and 
the status and assigned art unit 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 restriction 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 
or in an application data sheet as set forth in 
37 
CFR 1.76(b)(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). 
See MPEP § 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 § 201.08 and § 201.11.

For notation to be put in the file history by 
the examiner in the case of a divisional application, 
see MPEP § 202.02.

====201.06(a) Former 37 CFR 1.60 Divisional-Continuation Procedure====

 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. For more information 
pertaining to practice and procedure under former 
37 CFR 1.60, see MPEP § 201.06(a) in the MPEP 
8th Edition, Rev. 1 (February 2003)(available on 
the USPTO web site at www.uspto.gov/web/offices/
pac/mpep/mpep.htm).

====201.06(b) Former 37 CFR 1.62 File Wrapper Continuing Procedure====

37 CFR 1.62 was deleted effective December 1, 
1997. See 1203 O.G. 63, October 21, 1997. A 
request for a continuation or divisional application 
filed under former 37 CFR 1.62 on or after 
December 1, 1997, , in an application that was 
filed on or after June 8, 1995, will be treated as 
a request for continued examination (RCE) under 
37 CFR 1.114, see MPEP 706.07(h), paragraph 
IV. A request filed on or after December 1, 
1997, under former 37 CFR 1.62 for a continuation-
in-part (CIP) application, , or for a continuation 
or divisional of an application having a 
filing date before June 8, 1995, will be treated as 
an improper application.

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. For more information 
pertaining to practice and procedure under former 
37 CFR 1.62, see MPEP § 201.06(b) in the MPEP 
8th Edition, Rev. 1 (February 2003)(available on 
the USPTO web site at www.uspto.gov/web/offices/
pac/mpep/mpep.htm). 

====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 
§ 1.71 and at least one claim pursuant to § 1.75, and any drawing 
required by §
 
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 
§ 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 § 1.51(b)(2) and § 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 § 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 § 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 § 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 correspondence 
address was changed during the prosecution of the prior application, 
the change in power of attorney 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 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.

I.IN GENERAL

37 CFR 1.53(b) is the section under which all applications 
are filed EXCEPT: (A) an application resulting 
from entry of an international application into the 
national stage under 35 U.S.C. 371 and 37 CFR 
1.495; (B) a provisional application under 35 U.S.C. 
111(b) and 37 CFR 1.53(c); or (C) a continued prosecution 
application (CPA) of a design application 
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 § 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 (A) the result of the entry of an 
international application into the national stage after 
compliance with 35 U.S.C. 371 and 37 CFR 1.495, 
(B) a provisional application under 37 
CFR 1.53(c), 
or (C) a CPA of a design application filed 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(f). See 37 CFR 
1.53(f) and MPEP § 607.

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, divi
sional, or continuation-in-part application as such by 
submitting a reference to the prior-filed application 
with the appropriate relationship (i.e., continuation, 
divisional, or continuation-in-part) in compliance 
with 37 CFR 1.78(a) in the first sentence(s) of the 
specification or in an application data sheet to avoid 
the need for a petition to accept an unintentionally 
delayed claim under 37 CFR 1.78(a) and the surcharge 
set forth in 37 CFR 1.17(t), and the issuance of 
a filing receipt that does not indicate that the application 
is a continuation, divisional, or continuation-in-
part. See MPEP § 201.11.

II.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). If the copy of the signed 
oath or declaration from the prior application included 
a power of attorney, the power of attorney in the copy 
of the signed oath or declaration from the prior application 
would carry over to the continuation or divisional 
application. If the power of attorney was 
changed during the prosecution of the prior application, 
see subsection VII below.

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 mailing or 
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.

III.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: (A) 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 (B) 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. To claim the benefit 
of a prior application under 35 
U.S.C. 120, 121, or 
365(c), applicant must include a reference to the prior 
application in compliance with 37 CFR 1.78(a) in the 
first sentence(s) of the specification or in an application 
data sheet. See MPEP § 201.11. The new specification 
and drawings of a continuation or divisional 
application filed under 37 
CFR 1.53(b) may include 
changes to the specification and drawings 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. Applicant should file a new set of claims as 
the original claims of the continuing application 
instead of filing a copy of the claims from the prior 
application and a preliminary amendment to those 
claims. 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(b).

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. 
Form paragraph 2.10.01 may be used to require the 
applicant to correct the relationship of the applications. 
See MPEP § 201.11.

Where a copy of the oath or declaration from a 
prior application was filed in a continuation or divisional 
application, if the examiner determines that 
new matter is present relative to the prior application, 
the examiner should so notify the applicant in the next 
Office action (preferably the first Office action). The 
examiner should require: (A) a new oath or declaration 
along with the surcharge set forth in 37 CFR 
1.16(f); and (B) that the application be redesignated as 
a continuation-in-part.

Any utility or plant patent application, including 
any continuing application, that will be published pursuant 
to 35 U.S.C. 122(b) should be filed under 
37 CFR 1.53(b) with a specification (including the 
claims), and drawings, that the applicant would like to 
have published. This is important because the Office 
will generally publish the specification (including the 
claims) and drawings as filed and, under 35 U.S.C. 
154(d), a patentee may obtain provisional rights if the 
invention claimed in a patent is substantially identical 
to the invention claimed in the application publication. 
Filing a continuing application under 37 CFR 
1.53(b) with a preliminary amendment (which makes 
all the desired changes to the specification, including 
adding, deleting or amending claims) is NOT recommended 
because the changes made by the preliminary 
amendment will generally not be reflected in the 
patent application publication even if the preliminary 
amendment is referred to in an oath or declaration. As 
noted above, a continuation or divisional application 
filed under 37 CFR 1.53(b) may be filed with a new 
specification and corrected drawings, along with a 
copy of an oath or declaration from a prior (parent) 
application, provided the new specification and drawings 
do not contain any subject matter that would 
have been new matter in the prior application. Thus, 
the new specification and corrected drawings may 
include some or all of the amendments entered during 
the prosecution of the prior application(s), as well as 
additional amendments submitted for clarity or contextual 
purposes, and a new set of claims. In order to 
have a patent application publication of a continuation 
or divisional application contain only a desired set of 
claims, rather than the set of claims in the prior application, 
it is strongly recommended that the continuation 
or divisional application be filed under 37 CFR 
1.53(b) with a new specification containing only the 
desired set of claims. If the continuation or divisional 
application is filed with a copy of the specification 
from the prior application along with a preliminary 
amendment which cancels, amends and/or adds new 
claims, publication of the application may exclude the 
preliminary amendment unless a copy of the specification 
(with the amended set of claims) was also submitted 
through the Office’s Electronic Filing System 
(EFS).

IV.INCORPORATION BY REFERENCE

An applicant may incorporate by reference the prior 
application by including, in the continuation or divisional 
application-as-filed, an explicit statement that 
such specifically enumerated prior application or 
applications are “hereby incorporated by reference.” 
The statement must appear in the specification. See 
37 
CFR 1.57(b) and MPEP § 608.01(p). The inclusion 
of this incorporation by reference statement will permit 
an applicant to amend the continuation or divisional 
application to include subject matter from the 
prior application(s), without the need for a petition 
provided the continuation or divisional application is 
entitled to a filing date notwithstanding the incorporation 
by reference. For applications filed prior to September 
21, 2004, the incorporation by reference 
statement may appear in the transmittal letter or in the 
specification. Note that for applications filed prior to 
September 21, 2004, if applicants used a former version 
of the transmittal letter form provided by the 
USPTO, the incorporation by reference statement 
could only be relied upon to add inadvertently omitted 
material to the continuation or divisional application.

For applications filed on or after September 21, 
2004, a claim under 35 U.S.C. 120 and 37 CFR 1.78for benefit of a prior-filed nonprovisional application 
or international application designating the U.S. that 
was present on the filing date of the continuation or 
divisional application is considered an incorporation 
by reference of the prior-filed application as to inadvertently 
omitted material, subject to the conditions 
and requirements of 37 CFR 1.57(a). The purpose of 
37 CFR 1.57(a) is to provide a safeguard for applicants 
when all or a portion of the specification and/or 
drawing(s) is (are) inadvertently omitted from an 
application. For applications filed on or after September 
21, 2004, applicants are encouraged to provide an 
explicit incorporation by reference statement to the 
prior-filed application(s) for which benefit is claimed 
under 35 U.S.C. 120 if applicants do not wish the 
incorporation by reference to be limited to inadvertently 
omitted material pursuant to 37 CFR 1.57(a). 
See 37 CFR 1.57(b) and MPEP § 608.01(p) for discussion 
regarding explicit incorporation by reference.

An incorporation by reference statement added 
after an application’s filing date is not effective 
because no new matter can be added to an application 
after its filing date (see 35 U.S.C. 132(a)). If an incorporation 
by reference statement is included in an 
amendment to the specification to add a benefit claim 
under 35 U.S.C. 120 after the filing date of the application, 
the amendment would not be proper. When a 
benefit claim under 35 U.S.C. 120 is submitted after 
the filing of an application, the reference to the prior 
application cannot include an incorporation by reference 
statement of the prior application. See Dart 
Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 
(C.A.D.C. 1980).

Mere reference to another application, patent, or 
publication is not an incorporation of anything therein 
into the application containing such reference for the 
purpose of the disclosure required by 35 U.S.C. 112, 
first paragraph. In re de Seversky, 474 F.2d 671, 
177 
USPQ 144 (CCPA 1973). See MPEP § 608.01(p). 
As noted above, however, for applications filed on or 
after September 21, 2004, 37 CFR 1.57(a) provides 
that a claim for the benefit of a prior-filed application 
under 37 CFR 1.78 is considered an incorporation by 
reference as to inadvertently omitted material. See 
MPEP § 201.17.

A.Application NOT Entitled to a Filing Date

 Material needed to accord an application a filing 
date may not be incorporated by reference unless an 
appropriate petition under 37 CFR 1.57(a)(3) or under 
37 CFR 1.182 is granted. Until such a petition has 
been granted, the application will not be entitled to a 
filing date.

For an application filed on or after September 21, 
2004, if the material needed for a filing date is completely 
contained within a prior-filed application to 
which benefit is claimed, applicant may file a petition 
under 37 CFR 1.57(a)(3) along with the fee set forth 
in 37 CFR 1.17(f) and an amendment with the inadvertently 
omitted material requesting that the amendment 
be entered and the application be accorded a 
filing date as of the original date of deposit of the 
application papers. See 37 CFR 1.57(a)(3) and MPEP 
§ 201.17.

In an application containing an explicit incorporation 
by reference statement in the specification or in a 
transmittal letter (if the transmittal letter was filed 
prior to September 21, 2004), a petition for the granting 
of a filing date may be made under 37 CFR 1.182. 
A petition under 37 CFR 1.182 and the required petition 
fee, including an amendment submitting the necessary 
omitted material, requesting that the necessary 
omitted material contained in the prior application 
and submitted in the amendment, be included in the 
continuation or divisional application based upon the 
incorporation by reference statement, is required in 
order to accord the application a filing date as of the 
date of deposit of the continuation or divisional application. 
An amendment submitting the omitted material 
and relying upon the incorporation by reference 
will not be entered in the continuation or divisional 
application unless a decision granting the petition 
states that the application is accorded a filing date and 
that the amendment will be entered.

B.Application Entitled to a Filing Date

If a continuation or divisional application as originally 
filed on or after September 21, 2004 does not 
include an explicit incorporation by reference statement 
and is entitled to a filing date despite the inadvertent 
omission of a portion of the prior 
application(s), applicant may be permitted to add the 
omitted material by way of an amendment under 37 
CFR 1.57(a). Such an amendment must be made 
within any time period set by the Office. See 37 CFR 
1.57(a)(1).

If an application as originally filed included a 
proper explicit incorporation by reference statement 
(or an explicit incorporation by reference statement 
that has been made effective under 37 CFR 1.57(g)), 
the omitted specification page(s) and/or drawing figure(
s) may be added by amendment provided the 
omitted item(s) contains only subject matter in common 
with a document that has been properly incorporated 
by reference. If the Office identified the omitted 
item(s) in a “Notice of Omitted Item(s),” applicant 
need not respond to the “Notice of Omitted Item(s).” 
Applicant should, however, submit the amendment 
adding the omitted material prior to the first Office 
action to avoid delays in the prosecution of the application. 
See MPEP § 601.01(d) and § 601.01(g).

V.INVENTORSHIP

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 is permitted. Applicant has the option 
of filing: (A) a newly executed oath or declaration 
signed by the inventors for the continuation or divisional 
application; or (B) a copy of the oath or declaration 
filed in the prior application 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. See 37 
CFR 1.63(d). 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 or request 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.

VI.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(
s) or legal representative (pursuant to 37 CFR 1.42or 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 1.47status in the prior application, should be forwarded by 
the Office of Initial Patent Examination (OIPE) to the 
Office of Petitions before being forwarded to the 
Technology Center (TC). The Office of Petitions will 
mail applicant a letter stating that “Rule 47” status has 
been accorded to the continuation or divisional application, 
but will not repeat the notice to the nonsigning 
inventor nor the announcement in the Official 
Gazette. See 37 CFR 1.47(c).

VII.CHANGE OF ATTORNEY/CORRESPONDENCE 
ADDRESS

37 CFR 1.63(d)(4) provides that where the power 
of attorney or correspondence address was changed 
during the prosecution of the prior application, the 
change in power of attorney 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 correspondence 
address which occurred during the prosecution of the 
prior application.

VIII.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), a new assertion as to the continued entitlement 
to small entity status under 37 CFR 1.27 is 
required. See MPEP § 509.03.

IX.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.

X.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 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.

XI.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 
patent practitioner not of record acting in a representative 
capacity under 37 CFR 1.34 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), 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). See MPEP § 711.01.

If the prior nonprovisional application which is to 
be expressly abandoned is before the Board of Patent 
Appeals and Interferences (Board), 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, the proceeding is terminated when 
the mandate is issued by the Court.

XII.EXAMINATION

The practice relating to making first action rejections 
final also applies to continuation and divisional 
applications filed under 37 CFR 1.53(b). See MPEP § 
706.07(b).

Any preliminary amendment that is present on the 
filing date of an application filed under 37 CFR 
1.53(b) is part of the original disclosure. Amendments 
must be filed in compliance with the requirements of 
37 CFR 1.121 (e.g., the amendment must include a 
complete claim listing whenever a claim is added, 
canceled, or amended). See MPEP § 714. Applications 
should be classified and assigned to the proper 
Technology Center (TC) by taking into consideration 
the claims that will be before the examiner upon entry 
of such a preliminary amendment.

Where a copy of the oath or declaration from a 
prior application was filed in a continuation or divisional 
application, if the examiner determines that 
new matter is present relative to the prior application, 
the examiner should so notify the applicant in the next 
Office action (preferably the first Office action). The 
examiner should require: (A) a new oath or declaration 
along with the surcharge set forth in 37 CFR 
1.16(f); and (B) that the application be redesignated as 
a continuation-in-part. See MPEP § 608.04(b) when 
new matter is contained in 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 prior to September 21, 2004 
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). For applications 
filed prior to September 21, 2004, the statement could 
appear in the application transmittal letter (or the 
specification, rather than only in the specification). 
The inclusion of this incorporation by reference of the 
prior application(s) was necessary in these applications 
to permit applicant to amend the 
continuation or 
divisional application to include subject matter in the 
prior application(s) without the need for a petition. 
See also the subsection above regarding “Incorporation 
by Reference.” If the continuation or divisional 
application filed prior to September 21, 2004 under 37 
CFR 1.53(b) does not include the incorporation by 
reference statement in the application papers (in the 
specification or in the transmittal letter) 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).” For 
applications filed on or after September 21, 2004, see 
37 CFR 1.57(a) and MPEP § 201.17.

====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 application is for a design patent:

(ii)The prior nonprovisional application is a design 
application that is complete as defined by §
 
1.51(b); 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 §
 
1.313(c) 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, search fee, and examination fee for a 
continued prosecution application filed under this paragraph are 
the basic filing fee as set forth in § 1.16(b), the search fee as set 
forth in § 1.16 (l), and the examination fee as set forth in 
§ 1.16(p).

(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 correction of inventorship under § 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 § 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 
§ 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)See § 1.103(b) for requesting a limited suspension 
of action in an application filed under this paragraph.

'''I. CPA PRACTICE HAS BEEN ELIMINATED AS TO UTILITY AND PLANT APPLICATIONS'''

Effective July 14, 2003, continued prosecution 
application (CPA) practice has been eliminated as to 
utility and plant applications. Applicants who wish to 
continue examination of the same claimed invention 
after the prosecution of a utility or plant application is 
closed should consider filing a request for continued 
examination (RCE) under 37 CFR 1.114. For more 
information on RCE practice, see MPEP § 706.07(h). 
Applicants who wish to file a continuation, divisional, 
or continuation-in-part application should file an 
application under 37 CFR 1.53(b). See MPEP § 
201.06(c). CPAs filed prior to July 14, 2003 will continue 
to be processed and examined under the procedures 
set forth in prior 37 CFR 1.53(d). Any request 
for a CPA filed on or after July 14, 2003 in a utility or 
plant application is improper, regardless of the filing 
date of the utility or plant application in which the 
CPA is filed. 

The Office will not convert an improper CPA into 
an application under 37 CFR 1.53(b) unless the applicant 
shows that there are extenuating circumstances 
that warrant the burdensome process of such conversion.

If an examiner discovers that an improper or 
incomplete CPA has been processed as a proper CPA 
in error, the examiner should immediately notify a 
supervisory applications examiner (SAE) or other 
technical support staff within the Technology Center 
(TC) who will reprocess the CPA and correct the 
application records as appropriate.

A.Applications Filed on or After June 8, 1995

If a utility or plant application has a filing date on 
or after June 8, 1995, an improper CPA filed on or 
after July 14, 2003 will be treated as a request for continued 
examination (RCE) under 37 CFR 1.114. See 
MPEP § 706.07(h) and form paragraph 7.42.15. If the 
improper CPA does not satisfy the requirements of 37 
CFR 1.114 (e.g., the request lacks a submission or the 
fee under 37 CFR 1.17(e), or the prosecution of the 
application is not closed), the Office will treat the 
improper CPA as an improper RCE, and the time 
period set in the last Office action (or notice) will continue 
to run. The Office will send the applicant a 
Notice of Improper Request for Continued Examination 
(RCE), PTO-2051. If the time period for reply to 
the last Office action (or notice) has expired, the 
application is abandoned and the applicant must file a 
petition under 37 CFR 1.137 and the required petition 
fee to revive the abandoned application. Unless prosecution 
in the application was not closed, the petition 
must be accompanied by a submission as defined by 
37 CFR 1.114(c) and the fee set forth in 37 CFR 
1.17(e), unless previously filed. If the last Office 
action is a notice of allowance, the issue fee must also 
be paid at the time of filing the petition to revive. If 
prosecution in the application was not closed, the petition 
must be accompanied by a reply to the non-final 
Office action.

Applicants cannot, as a matter of right, obtain continued 
examination on claims that are independent 
and distinct from the invention previously claimed 
(i.e., applicants cannot switch inventions when filing 
an RCE). See 37 CFR 1.145. Therefore, if applicants 
file a request for a divisional CPA on or after July 14, 
2003 and the request satisfies all the requirements in 
37 CFR 1.114 (e.g., the request is accompanied by the 
fee as set forth in 37 CFR 1.17(e) and a submission), 
the Office will treat the improper divisional CPA as a 
proper RCE. However, any amendment canceling all 
claims drawn to the elected invention and presenting 
only claims drawn to the nonelected invention will be 
treated as nonresponsive. See MPEP § 821.03. Any 
newly submitted claims that are directed to an invention 
distinct from and independent of the invention 
previously claimed will be withdrawn from consideration. 
Applicants should be notified by using form 
paragraph 8.26 or 8.27. 

B.Applications Filed Before June 8, 1995

If a utility or plant application has a filing date 
before June 8, 1995, the Office cannot treat an 
improper CPA filed on or after July 14, 2003 as an 
RCE because RCE practice does not apply to applications 
filed before June 8, 1995. The Office will notify 
the applicant of the improper CPA by mailing a 
Notice of Improper CPA (or FWC) Filing For 
Utility 
or Plant Applications Filed Before June 8, 
1995, PTO-2011 (Rev. 7/03 or later). The time period 
for reply set in the last Office action (or notice) will 
continue to run. Applicant may file a continuing 
application under 37 CFR 1.53(b). If the time period 
for reply has expired, the application is abandoned. If 
the application in which the improper CPA is filed is 
abandoned when a continuing application is filed, 
applicant would need to file a petition under 37 CFR 
37 CFR 1.137 to revive the prior application to establish 
copendency with the continuing application under 
37 CFR 1.53(b).

II.FILING AND INITIAL PROCESSING OF 
CPAs FOR DESIGN APPLICATIONS

A.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) if 
the prior application is a design application that is 
complete as defined by 37 CFR 1.51(b). 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 U.S. 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 normally issue a new filing 
receipt for a CPA. See 37 CFR 1.54(b). 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). For examination priority 
purposes only, the USPTO will treat continuation 
CPAs as if they were “amended” applications (as of 
the CPA filing date) and not as “new” applications. 
This treatment is limited to CPAs in which the prior 
application has an Office action issued by the examiner. 
If no Office action has been issued in the prior 
application, the CPA will be treated, for examination 
purposes, like a “new” application unless a petition to 
make special under 37 CFR 1.102 or a request for 
expedited examination under 37 CFR 1.155 is filed in 
the CPA. As “amended” applications generally have a 
shorter time frame for being acted on by examiners 
than “new” applications, the treatment of a CPA as an 
“amended” application will result in a first Office 
action being mailed in the CPA much sooner than if it 
had been filed as a continuation application under 37 
CFR 1.53(b) (or under former 37 CFR 1.60 or 1.62). 
Therefore, applicants are strongly encouraged to file 
any preliminary amendment in a CPA at the time the 
CPA is filed. See 37 CFR 1.115 and MPEP 
§ 714.03(a).

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). If applicant wants the USPTO to disregard 
a previously filed request for a CPA filed in a 
design application (and not recognize its inherent 
request to expressly abandon the prior application) 
and to treat the paper as the filing of an application 
under 37 CFR 1.53(b), the applicant must file a petition 
under 37 CFR 1.182. A request to expressly 
abandon an application is not effective until the abandonment 
is acknowledged, including the express 
abandonment of the prior application of a CPA that 
occurs by operation of 37 CFR 1.53(d)(2)(v). The 
express abandonment of the prior application is 
acknowledged and becomes effective upon processing 
and entry of the CPA into the file of the prior application. 
Thus, such a petition under 37 
CFR 1.182 should 
be filed expeditiously since the petition will not be 
granted once the request for a CPA has been entered 
into the prior application (and the inherent request to 
expressly abandon the prior application has been 
acknowledged). If the request for a CPA has been 
entered into the prior application by the time the petition 
under 37 CFR 1.182 and the application file are 
before the deciding official for a decision on the petition, 
the petition will be denied. It is noted, however, 
that if the applicant intended to file a second application 
(either a continuation or a divisional) without 
abandoning the prior application, applicant can still 
achieve that result without loss of the benefit of the 
original filing date by: (A) continuing the prosecution 
of the original application via the CPA; and (B) filing 
a new continuation/divisional under 37 CFR 1.53(b) 
claiming benefit of the CPA and its parent applications 
under 35 U.S.C. 120 during the pendency of the 
CPA. 

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. 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. Since 37 CFR 1.125(b) requires 
that a substitute specification be accompanied by, 
inter alia, a statement that the substitute specification 
includes no new matter, any substitute specification 
containing new matter will be denied entry by the 
examiner. Any preliminary amendment to the written 
description and claims, other than a substitute specification, 
filed with a CPA request will ordinarily be 
entered. Any new matter which is 
entered, however, 
will be required to be canceled pursuant to 35 U.S.C. 
132 from the descriptive portion of the specification. 
Further, any claim(s) which relies upon such new matter 
for support will be rejected under 35 U.S.C. 112, 
first paragraph. See MPEP § 2163.06. In the event 
that a substitute specification or preliminary amendment 
containing new matter was filed with a request 
for a CPA, applicant may file a petition under 37 CFR 
1.182 requesting that the substitute specification or 
preliminary amendment be removed from the CPA 
application file, and be accorded the status as a separate 
application by being placed in a new file wrapper 
and assigned a new application number, with the new 
application being accorded a filing date as of the date 
the request for a CPA and substitute specification/preliminary 
amendment were filed. Of course, a request 
for a CPA is not improper simply because the request 
is accompanied by a substitute specification or preliminary 
amendment containing new matter. Thus, an 
applicant will not be entitled to a refund of the filing 
fee paid in a proper CPA as a result of the granting of 
a petition under 37 CFR 1.182 requesting that the substitute 
specification or preliminary amendment be 
removed from the CPA application file.

A CPA may be based on a prior CPA so long as the 
prior CPA is complete under 37 CFR 1.51(b) and is a 
design application. There is no other 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 basic filing fee, search fee, and examination 
fee are required in accordance with 35 
U.S.C. 41 and 
37 CFR 1.16. No search and examination fees are 
required for a CPA filed before December 8, 2004. 
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.

If application papers for a design application 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 applica
tion filed under 37 CFR 1.53(b) or include a reference 
to a “continuation-in-part CPA”). If application papers 
for a utility or plant application are in any way designated 
as a CPA filing under 37 CFR 1.53(d), the application 
papers will be treated as a request for continued 
examination (RCE) under 37 CFR 1.114. See I. CPA 
PRACTICE HAS BEEN ELIMINATED AS TO 
UTILITY AND PLANT APPLICATIONS, above.

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 a design application that is complete 
as defined by 37 CFR 1.51(b). 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) must contain, inter alia, the appropriate 
filing fee (including the basic filing fee, search 
fee, and examination 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: (A) payment of the issue fee on the prior 
application, unless a petition under 37 CFR 1.313(c)
is granted in the prior application; (B) abandonment 
of the prior application; or (C) termination of proceedings 
on the prior application.

Note that request for continued examination (RCE) 
practice under 37 CFR 1.114 is not available in design 
applications. Any improper RCE filed in a design 
application will not be treated as a CPA. An improper 
RCE filed in a design application will not toll the running 
of any time period for reply.

C.Initial Processing

A CPA request will be initially processed by the TC 
assigned the prior application. The TC will verify that 
(A) the prior application is a design application, (B) 
the correct application number of the prior nonprovisional 
application is identified in the request, (C) the 
request is properly signed, (D) 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, (E) 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 (F) the proper filing fee has been paid in the CPA. 
If one or more other conditions for filing a CPA have 
not been satisfied or the proper basic filing fee, search 
fee, and examination fee have 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 fees have been submitted. See 37 
CFR 1.53(h). If an examiner discovers that an 
improper or incomplete CPA has been processed as a 
proper CPA in error, the examiner should immediately 
notify a supervisory applications examiner (SAE) or 
other technical support staff within the TC who will 
reprocess the CPA and correct the application records.

D.Incorrect Patent 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 TC 
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 TC 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. For Image 
File Wrapper (IFW) processing, see IFW Manual. If 
the TC 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 TC 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 U.S. 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 U.S. 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 TC. Applicants may use either the Certificate of 
Mailing or Transmission procedure under 37 CFR 1.8or the “Express Mail” procedure under 37 CFR 1.10for 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 TC 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 U.S. 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: (A) title of invention; (B) name of applicant(
s); and (C) correspondence address. See 37 CFR 
1.53(d)(8). 

E.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. 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.

F.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 U.S. 
Patent and Trademark Office by mail (see MPEP 
§ 501), by facsimile transmission (see MPEP 
§ 502.01) or it may be filed directly at the Customer 
Service Window located in the Randolph Building, 
401 Dulany Street, Alexandria, VA 22314.

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. 

Applicants filing a CPA by facsimile transmission 
may include a “Receipt for Facsimile Transmitted 
CPA” (PTO/SB/29A) containing a mailing address 
and identifying information (e.g., the prior application 
number, filing date, title, first named inventor) with 
the request for a CPA. The USPTO will: (A) separate 
the “Receipt for Facsimile Transmitted CPA” from the 
CPA request papers; (B) date-stamp the “Receipt for 
Facsimile Transmitted CPA”; (C) verify that the identifying 
information provided by the applicant on the 
“Receipt for Facsimile Transmitted CPA” is the same 
information provided on the accompanying request 
for a CPA; and (D) mail the “Receipt for Facsimile 
Transmitted CPA” to the mailing address provided on 
the “Receipt for Facsimile Transmitted CPA.” The 
“Receipt for Facsimile Transmitted CPA” cannot be 
used to acknowledge receipt of any paper(s) other 
than the request for a CPA. A returned “Receipt for 
Facsimile Transmitted CPA” may be used as prima 
facie evidence that a request for a CPA containing the 
identifying information provided on the “Receipt for 
Facsimile Transmitted CPA” was filed by facsimile 
transmission on the date stamped thereon by the 
USPTO. As the USPTO will verify only the identifying 
information contained on the request for a CPA, 
and will not verify whether the CPA was accompanied 
by other papers (e.g., a preliminary amendment), the 
“Receipt for Facsimile Transmitted CPA” cannot be 
used as evidence that papers other than a CPA were 
filed by facsimile transmission in the USPTO. Likewise, 
applicant-created “receipts” for acknowledgment 
of facsimile transmitted papers (whether created 
for the acknowledgment of a CPA or other papers) 
cannot be used as evidence that papers were filed by 
facsimile in the USPTO. Applicants are cautioned not 
to include information on a “Receipt for Facsimile 
Transmitted CPA” that is intended for retention in the 
application file, as the USPTO does not plan on 
retaining a copy of such receipts in the file of the 
application.

If an applicant filing a CPA by facsimile does not 
include an authorization to charge the basic filing fee, 
search fee, and examination fee to a deposit account 
or to a credit card using PTO-2038 (See MPEP § 509), 
the application will be treated under 37 CFR 1.53(f)
as having been filed without the appropriate fees (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)(2)(i)(A)). Thus, if (A) the Patent and Trademark 
Office mails a final Office action on July 2, 
1997 (Wednesday), with a shortened statutory period 
of 3 months to reply and (B) a petition for a three-
month extension of time (and the fee) and a CPA are 
received in the U.S. 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 
(A) the U.S. Patent and Trademark Office mails a 
final Office action on July 2, 1997 (Wednesday), with 
a shortened statutory period of 3 months to reply and 
(B) 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 U.S. 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.

G.Filing Fee

The filing fees for a CPA are the basic filing fee as 
set forth in 37 CFR 1.16(b)(1), the search fee as set 
forth in 37 CFR 1.16(l), and the examination fee as set 
forth in 37 CFR 1.16(p). 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 TC should charge the necessary filing fee of 
the CPA to the deposit account. 
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, search fee, and examination fee 
are insufficient or have been omitted, applicant will 
be so notified by the TC and given a period of time in 
which to file the missing fee(s) and to pay the surcharge 
set forth in 37 CFR 1.16(f) in order to prevent 
abandonment of the application. For CPAs filed on or 
after December 8, 2004 but prior to July 1, 2005, 
which have been accorded a filing date under 37 CFR 
1.53(d), if the search and/or examination fees are paid 
on a date later than the filing date of the application, 
the surcharge under 37 CFR 1.16(f) is not required. 
For CPAs filed on or after July 1, 2005, which have 
been accorded a filing date under 37 CFR 1.53(d), if 
any of the basic filing fee, search fee, or examination 
fee are paid on a date later than the filing date of the 
CPA, the surcharge under 37 CFR 1.16(f) is required. 
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 basic filing fee, search fee, examination 
fee, and any necessary surcharge, 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 basic filing fee, search fee, 
examination fee, and any necessary surcharge, are 
received.

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. 37 CFR 1.27(c)(4) provides that the refiling 
of an application as a continued prosecution application 
under 37 CFR 1.53(d) requires a new assertion 
of continued entitlement to small entity status.

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 or otherwise includes an assertion of entitlement 
to small entity status, the large entity filing fee 
should be charged.

H.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 or to a credit card (See 
MPEP § 509) 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.

I.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 mailed 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.

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.

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.

J.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.

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. For 
paper application files, 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 
§ 201.03 and § 605.04(g). For Image File Wrapper 
(IFW) processing, see the IFW Manual. 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 request 
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 request 
under 37 CFR 1.48 if such was submitted on filing of 
the CPA. If a request 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).

III.EXAMINATION OF CPAs

A.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 nor a 
reference in the CPA’s application data sheet 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. 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: (A) the non-continued 
prosecution application originally assigned such 
application number (the prior application as to the 
first CPA in the chain); and (B) 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. 119(e), 120, 121, or 365(c), 
37 
CFR 1.78(a)(2) and (a)(5) continue to require that 
such application contain a reference to any such prior 
application(s). The reference(s) can be in an application 
data sheet (37 CFR 1.76) or in the first sentence(
s) of the specification. See 37 CFR 1.78(a)(2)
and (a)(5). As a CPA uses the application file of the 
prior application, a specific reference in the prior 
application (as to the CPA) will constitute 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(s) of such application unless such 
reference is made in an application data sheet. 
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(s) of the specification to provide 
the specific reference to the prior application, or 
to provide such a reference in an application data 
sheet. Any such amendment will not be entered. The 
applicant should be advised in the next Office action 
that any such amendment to the specification or reference 
in the application data sheet has not been entered 
by using form paragraph 2.34. See 37 CFR 1.78(a)(2). 

Claims under 35 U.S.C. 119(a)-(d) and (e) for the 
benefit of the filing dates of earlier applications in a 
parent application will automatically carry over to a 
CPA.

B.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 § 1490, “Withdrawing a Terminal Disclaimer,” 
subheading entitled “A. Before Issuance of Patent.”

C.Prior Election

 An election made in the prior application carries 
over to the CPA only if all of the following conditions 
are met: (A) the CPA is designated as a continuation 
or is not designated at all (i.e., the CPA is NOT designated 
as a divisional); (B) there was an express election 
by the applicant in reply to a restriction 
requirement in the prior application; (C) the CPA presents 
claim(s) drawn only to invention(s) claimed in 
the prior application; and (D) 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.

D.Information Disclosure Statements and Preliminary 
Amendments

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 before the mailing of a first Office 
action on the merits will be considered by the examiner, 
regardless of whatever else has occurred in the 
examination process up to that point in time. The submission 
of an information disclosure statement after 
the first Office action is mailed could delay prosecution. 
Therefore, applicants are encouraged to file any 
information disclosure statement in a CPA as early as 
possible, preferably at the time of filing the CPA. For 
further discussion of information disclosure statements, 
see MPEP § 609.

 Applicants are also encouraged to file all preliminary 
amendments at the time of filing a CPA because 
the entry of any preliminary amendment filed after the 
filing date of the CPA could be denied under 37 CFR 
1.115 if the preliminary amendment unduly interferes 
with the preparation of a first Office action. See 
MPEP § 714.03(a). In a situation where the applicant 
needs more time to prepare a preliminary amendment 
or to file an information disclosure statement, applicant 
can request a three-month suspension of action 
under 37 CFR 1.103(b). The three-month suspension 
of action under 37 CFR 1.103(b) must be filed at the 
time of filing a CPA. See MPEP § 709.

E.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.

IV.PUBLIC ACCESS TO CPAs

A.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. For Image File Wrapper (IFW) processing, 
see IFW Manual. See MPEP § 103 for further discussion 
of access to an abandoned application contained 
in the file of a pending CPA.

B.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.

===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 prior application 
becomes abandoned or patented. The continuation 
application may be filed under 37 CFR 1.53(b) (or 
1.53(d) if the application is a design application). 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. The continuation 
application must claim the benefit of the prior nonprovisional 
application under 35 U.S.C. 120 or 365(c). 
For more information on claiming the benefit of a 
prior nonprovisional application, see MPEP 
§ 201.11.

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 an application that claims benefit of a provisional 
application is a nonprovisional application of 
a provisional application, not a continuation, division, 
or continuation-in-part of the provisional application.

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. A continued prosecution application 
(CPA) under 37 CFR 1.53(d) (available only for 
design applications), however, must be filed prior to 
payment of the issue fee unless a petition under 37 
CFR 1.313(c) is granted in the prior application. In 
addition, a continuation or divisional application may 
only be filed under 37 CFR 1.53(d) if the prior nonprovisional 
application is a design application that is 
complete as defined by 37 CFR 1.51(b).

For notation to be put in the file history by the 
examiner in the case of a continuation application, see 
MPEP § 202.02.

===201.08 Continuation-in-Part Application===

* A continuation-in-part application:
** is an application '''filed during the lifetime''' of an earlier nonprovisional application; 
** '''repeats some substantial portion or all''' of the earlier nonprovisional application; and
** '''adds matter not disclosed''' in the said earlier nonprovisional application.
* The continuation-in-part application may only be filed under 37 CFR 1.53(b).
* The continuation-in-part application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120 or 365(c).
* A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

An application claiming the benefit of a provisional 
application under 35 U.S.C. 119(e) should not be 
called a "continuation-in-part" of the provisional 
application since an application that claims benefit of 
a provisional application is a nonprovisional application 
of a provisional application, not a continuation, 
division, or continuation-in-part of the provisional 
application.

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. Or, 
a joint continuation-in-part application may derive 
from an earlier sole application.

'''Requirements''':
* The first application and the continuation-in-part application must be filed with at least one common inventor;
* The continuation-in-part application must be filed before the patenting, abandonment of, or termination of proceedings on the first application; and 
* The continuation-in-part application must contain or be amended to contain a specific reference to the earlier filed application.
** (The specific reference must be submitted either in the first sentence(s) of the specification or in an application data sheet.)

===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, 45 USPQ 
186, 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 in the file history (see 
MPEP § 202.02) that one application is a “Substitute” 
for another is printed in the heading of the patent copies. 
See MPEP § 202.02.

As is explained in MPEP § 201.11, a “Substitute” 
does not obtain the benefit of the filing date of the 
prior application.

===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.

===201.11 Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e)===

Under certain circumstances a later-filed application 
for patent is entitled to the benefit of the filing 
date of a prior-filed nonprovisional application or provisional 
application which has at least one common 
inventor. The conditions are specified in 35 
U.S.C. 120 and 37 CFR 1.78(a)(1) – (a)(3) for the benefit 
claim of a prior nonprovisional application and 35 
U.S.C. 119(e) and 37 CFR 1.78(a)(4) – (a)(6) for the 
benefit claim of a prior provisional application.

{{Statute|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. No application shall be 
entitled to the benefit of an earlier filed application under this section 
unless an amendment containing the specific reference to the 
earlier filed application is submitted at such time during the pendency 
of the application as required by the Director. The Director 
may consider the failure to submit such an amendment within that 
time period as a waiver of any benefit under this section. The 
Director may establish procedures, including the payment of a 
surcharge, to accept an unintentionally delayed submission of an 
amendment under this section.
|}


{{Statute|35 U.S.C. 119. Benefit of earlier filing date; right of priority.}}
{{Ellipsis}}
(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. No application shall be entitled to the benefit 
of an earlier filed provisional application under this subsection 
unless an amendment containing the specific reference to the earlier 
filed provisional application is submitted at such time during 
the pendency of the application as required by the Director. The 
Director may consider the failure to submit such an amendment 
within that time period as a waiver of any benefit under this subsection. 
The Director may establish procedures, including the payment 
of a surcharge, to accept an unintentionally delayed 
submission of an amendment under this subsection during the 
pendency of the 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.

(3)If the day that is 12 months after the filing date of a 
provisional application falls on a Saturday, Sunday, or Federal 
holiday within the District of Columbia, the period of pendency of 
the provisional application shall be extended to the next succeeding 
secular or business day.
|}


{{Statute|37 CFR 1.78. Claiming benefit of earlier filing date and cross-references to other applications.}}

(a)(1) A nonprovisional application or international application 
designating the United States of America may claim an 
invention disclosed in one or more prior-filed copending nonpro
visional applications or international applications designating the 
United States of America. In order for an application to claim the 
benefit of a prior-filed copending nonprovisional application or 
international application designating the United States of America, 
each prior-filed application must name as an inventor at least 
one inventor named in the later-filed application and disclose the 
named inventor’s invention claimed in at least one claim of the 
later-filed application in the manner provided by the first paragraph 
of 35 U.S.C. 112. In addition, each prior-filed 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)Entitled to a filing date as set forth in § 1.53(b) or 
§ 1.53(d) and have paid therein the basic filing fee set forth in 
§ 1.16 within the pendency of the application.

(2)(i)Except for a continued prosecution application 
filed under § 1.53(d), any nonprovisional application or international 
application designating the United States of America 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 a reference to each such prior-filed 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. 
Cross references to other related applications may be made 
when appropriate (see § 1.14). 

(ii)This reference must be submitted during the pendency 
of the later-filed application. If the later-filed application is 
an application filed under 35 
U.S.C. 111(a), this reference must 
also be submitted within the later of four months from the actual 
filing date of the later-filed application or sixteen months from the 
filing date of the prior-filed application. If the later-filed application 
is a nonprovisional application which entered the national 
stage from an international application after compliance with 
35 U.S.C. 371, this reference must also be submitted within the 
later of four months from the date on which the national stage 
commenced under 35 U.S.C. 371 (b) or (f) in the later-filed international 
application or sixteen months from the filing date of the 
prior-filed application. These time periods are not extendable. 
Except as provided in paragraph (a)(3) of this section, the failure 
to timely submit the reference required by 35 U.S.C. 120 and 
paragraph (a)(2)(i) of this section is considered a waiver of any 
benefit under 35 
U.S.C. 120, 121, or 365(c) to such prior-filed 
application. The time periods in this paragraph do not apply if the 
later-filed application is:

(A)An application for a design patent;

(B)An application filed under 35 U.S.C. 111 (a) 
before November 29, 2000; or

(C)A nonprovisional application which entered the 
national stage after compliance with 35 U.S.C. 371 from an international 
application filed under 35 U.S.C. 363 before November 
29, 2000.

(iii)If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be 
included in an application data sheet (§ 1.76), or the specification 
must contain or be amended to contain such reference in the first 
sentence(s) following the title.

(iv)The request for a continued prosecution application 
under § 1.53(d) is the specific reference required by 
35 
U.S.C. 120 to the prior-filed application. The identification of 
an application by application number under this section is the 
identification of every application assigned that application number 
necessary for a specific reference required by 35 U.S.C. 120 to 
every such application assigned that application number.

(3)If the reference required by 35 U.S.C. 120 and paragraph 
(a)(2) of this section is presented after the time period provided 
by paragraph (a)(2)(ii) of this section, the claim under 
35 
U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed 
copending nonprovisional application or international application 
designating the United States of America may be accepted if the 
reference identifying the prior-filed application by application 
number or international application number and international filing 
date was unintentionally delayed. A petition to accept an unintentionally 
delayed claim under 35 U.S.C. 120, 121, or 365(c) for 
the benefit of a prior-filed application must be accompanied by:

(i)The reference required by 35 U.S.C. 120 and paragraph 
(a)(2) of this section to the prior-filed application, unless 
previously submitted;

(ii)The surcharge set forth in § 1.17(t); and

(iii)A statement that the entire delay between the date 
the claim was due under paragraph (a)(2)(ii) of this section and 
the date the claim was filed was unintentional. The Director may 
require additional information where there is a question whether 
the delay was unintentional.

(4)A nonprovisional application, other than for a design 
patent, or an international application designating the United 
States of America may claim an invention disclosed in one or 
more prior-filed provisional applications. In order for an application 
to claim the benefit of one or more prior-filed provisional 
applications, each prior-filed provisional application must name 
as an inventor at least one inventor named in the later-filed application 
and disclose the named inventor’s invention claimed in at 
least one claim of the later-filed application in the manner provided 
by the first paragraph of 35 
U.S.C. 112. In addition, each 
prior-filed provisional application must be entitled to a filing date 
as set forth in § 1.53(c), and the basic filing fee set forth in 
§ 1.16(d) must be paid within the time period set forth in 
§ 1.53(g).

(5)(i) Any nonprovisional application or international 
application designating the United States of America claiming the 
benefit of one or more prior-filed provisional applications must 
contain or be amended to contain a reference to each such prior-
filed provisional application, identifying it by the provisional 
application number (consisting of series code and serial number). 

(ii)This reference must be submitted during the pendency 
of the later-filed application. If the later-filed application is 
an application filed under 35 
U.S.C. 111(a), this reference must 
also be submitted within the later of four months from the actual 
filing date of the later-filed application or sixteen months from the 
filing date of the prior-filed provisional application. If the later-
filed application is a nonprovisional application which entered the 
national stage from an international application after compliance 
with 35 U.S.C. 371, this reference must also be submitted within 
the later of four months from the date on which the national stage 
commenced under 35 
U.S.C. 371(b) or (f) in the later-filed international 
application or sixteen months from the filing date of the 
prior-filed provisional application. These time periods are not 
extendable. Except as provided in paragraph(a)(6) of this section, 
the failure to timely submit the reference is considered a waiver of 
any benefit under 35 U.S.C. 119(e) to such prior-filed provisional 
application. The time periods in this paragraph do not apply if the 
later-filed application is:

(A)An application filed under 35 U.S.C. 111(a) 
before November 29, 2000; or

(B)A nonprovisional application which entered the 
national stage after compliance with 35 U.S.C. 371 from an international 
application filed under 35 U.S.C. 363 before November 
29, 2000.

(iii)If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be 
included in an application data sheet (§ 1.76), or the specification 
must contain or be amended to contain such reference in the first 
sentence(s) following the title.

(iv)If the prior-filed provisional application was filed 
in a language other than English and both an English-language 
translation of the prior-filed provisional application and a statement 
that the translation is accurate were not previously filed in 
the prior-filed provisional application, applicant will be notified 
and given a period of time within which to file, in the prior-filed 
provisional application, the translation and the statement. If the 
notice is mailed in a pending nonprovisional application, a timely 
reply to such a notice must include the filing in the nonprovisional 
application of either a confirmation that the translation and statement 
were filed in the provisional application, or an amendment 
or Supplemental Application Data Sheet withdrawing the benefit 
claim, or the nonprovisional application will be abandoned. The 
translation and statement may be filed in the provisional application, 
even if the provisional application has become abandoned.

(6)If the reference required by 35 U.S.C. 119(e) and 
paragraph (a)(5) of this section is presented in a nonprovisional 
application after the time period provided by paragraph (a)(5)(ii) 
of this section, the claim under 35 
U.S.C. 119(e) for the benefit of 
a prior filed provisional application may be accepted during the 
pendency of the later-filed application if the reference identifying 
the prior-filed application by provisional application number was 
unintentionally delayed. A petition to accept an unintentionally 
delayed claim under 35 
U.S.C. 119(e) for the benefit of a prior-
filed provisional application must be accompanied by:

(i)The reference required by 35 U.S.C. 119(e) and 
paragraph (a)(5) of this section to the prior-filed provisional application, 
unless previously submitted;

(ii)The surcharge set forth in § 1.17(t); and

(iii)A statement that the entire delay between the date 
the claim was due under paragraph (a)(5)(ii) of this section and 
the date the claim was filed was unintentional. The Director may 
require additional information where there is a question whether 
the delay was unintentional.
|}


There are several conditions for a later-filed application 
to receive the benefit of the filing date of a 
prior-filed application under 35 U.S.C. 120, 121, or 
365(c), or under 35 U.S.C. 119(e) (provided the later-filed application is not a 
design application). The conditions are briefly summarized 
as follows:

(A) The prior-filed application must '''disclose the claimed invention''' of the later-filed application in the 
manner provided by the first paragraph of 35 U.S.C. 
112. 

(B) The later-filed application must be '''copending''' 
with the prior-filed nonprovisional application. For a benefit claim of a prior-filed provisional application, the later-filed 
application must be filed not later than 12 months 
after the filing date of the prior provisional application. 

(C) The later-filed application must contain a '''reference''' 
to the prior-filed application in the first sentence(s) of the specification or in an application data 
sheet.

(D) The later-filed application must be filed by an 
'''inventor or inventors named''' in the prior-filed application. 

(E) If the later-filed application is a utility or 
plant application filed on or after November 29, 2000, 
the reference to the prior-filed application must be 
''submitted within the time period''' set forth in 37 CFR 
1.78(a) (e.g., during the pendency of the later-filed 
application and within the later of 4 months from the 
actual filing date of the later-filed application or 16 
months from the filing date of the prior-filed application). 

(F) If the prior-filed application is a provisional 
application filed in a language other than English, a 
benefit claim requires the following to be filed in the provisional application: 
(1) an '''English language translation''' of the provisional 
application; and (2) a '''statement that the translation is 
accurate'''.

(G) If the prior-filed application was an international 
application designating the United States of 
America, it must be '''entitled to a filing date''' in accordance 
with PCT Article 11. See 37 CFR 1.78(a)(1)(i).

(H) If the prior-filed application was filed under 
35 U.S.C. 111, the prior-filed application must be 
'''entitled to a filing date''' and the '''basic filing fee''' of the 
prior-filed application must have been paid.

More information for each condition is provided 
in the subsections below. 

If the claims in the later-filed application are not 
entitled to the benefit of an earlier filing date, the 
examiner should:

(A) Notify applicant that one or more conditions for 
receiving the benefit of an earlier filing date have not 
been satisfied; and

(B)Conduct a prior art search based on the actual 
filing date of the application instead of the earlier filing 
date.

I.DISCLOSURE REQUIREMENT

The later-filed application must be an application 
for a patent for an invention which is also disclosed in 
the prior application (the parent or original nonprovisional 
application or provisional application); the disclosure 
of the invention in the prior application and in 
the later-filed 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). The prior-filed application 
must disclose the common named inventor’s invention 
claimed in the later-filed application in the manner 
provided by the first paragraph of 35 U.S.C. 112. 
See 37 CFR 1.78(a)(1). Accordingly, the disclosure of 
the prior-filed application must provide adequate support 
and enablement for the claimed subject matter of 
the later-filed application in compliance with the 
requirements of 35 U.S.C. 112, first paragraph.

A.Claiming the Benefit of Provisional Applications

Under 35 U.S.C. 119(e), the written description and 
drawing(s) (if any) of the provisional application must 
adequately support and enable the subject matter 
claimed in the nonprovisional application that claims 
the benefit of the provisional application. In New 
Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 
1290, 1294, 63 USPQ2d 1843, 1846 (Fed. Cir. 2002), 
the court held that for a nonprovisonal application to 
be afforded the priority date of the provisional application, 
“the specification of the provisional must 
‘contain a written description of the invention and the 
manner and process of making and using it, in such 
full, clear, concise, and exact terms,’ 35 U.S.C. § 112
¶1, to enable an ordinarily skilled artisan to practice 
the invention claimed in the nonprovisional application.”

In New Railhead, the patented drill bit was the subject 
of a commercial offer for sale. A provisional 
application was filed after the sale offer, but well 
within the one year grace period of 35 U.S.C. 102(b). 
A nonprovisional application, which issued as Patent 
No. 5,899,283, was filed within one year of the filing 
of the provisional application but more than one year 
after the sale offer. If the ‘283 patent was not afforded 
the priority date of the provisional application, the 
patent would be invalid under 35 U.S.C. 102(b) since 
it was filed more than one year after the commercial 
offer for sale. The court looked at claim 1 of the ‘283 
patent which recites a bit body being angled with 
respect to the sonde housing. The court then reviewed 
the provisional application and concluded that 
nowhere in the provisional application is the bit body 
expressly described as “being angled with respect to 
the sonde housing” as recited in claim 1 of the ‘283 
patent. The court held that the disclosure of the provisional 
application does not adequately support the 
invention claimed in the ‘283 patent as to the angle 
limitation and therefore, the ‘283 patent is not entitled 
to the filing date of the provisional application under 
35 U.S.C. 119(e)(1) and the ‘283 patent is invalid 
under 35 U.S.C. 102(b).

A claim is not required in a provisional application. 
However, for a claim in a later filed nonprovisional 
application to be entitled to the benefit of the filing 
date of the provisional application, the written 
description and drawing(s) (if any) of the provisional 
application must adequately support and enable the 
subject matter of the claim in the later filed nonprovisional 
application. If a claim in the nonprovisional 
application is not adequately supported by the written 
description and drawing(s) (if any) of the provisional 
application (as in New Railhead), that claim in the 
nonprovisional application is not entitled to the benefit 
of the filing date of the provisional application. If 
the filing date of the earlier provisional application is 
necessary, for example, in the case of an interference 
or to overcome a reference, care must be taken to 
ensure that the disclosure filed as the provisional 
application adequately provides (1) a written description 
of the subject matter of the claim(s) at issue in the 
later filed nonprovisional application, and (2) an 
enabling disclosure to permit one of ordinary skill in 
the art to make and use the claimed invention in the 
later filed nonprovisional application without undue 
experimentation.

B.Claiming the Benefit of Nonprovisional Applications

The disclosure of a continuation application must 
be the same as the disclosure of the prior-filed application. 
See MPEP § 201.07. The disclosure of a divisional 
application must be the same as the disclosure 
of the prior-filed application, or include at least that 
portion of the disclosure of the prior-filed application 
that is germane to the invention claimed in the divisional 
application. See MPEP § 201.06. The disclosure 
of a continuation or divisional application cannot 
include anything which would constitute new matter 
if inserted in the prior-filed application. A continuation-
in-part application may include matter not disclosed 
in the prior-filed application. See MPEP 
§ 201.08. Only the claims of the continuation-in-part 
application that are disclosed in the manner provided 
by the first paragraph of 35 U.S.C. 112 in the prior-
filed application are entitled to the benefit of the filing 
date of the prior-filed application. If there is a continuous 
chain of copending nonprovisional applications, 
each copending application must disclose the claimed 
invention of the later-filed application in the manner 
provided by the first paragraph of 35 U.S.C. 112, in 
order for the later-filed application to be entitled to the 
benefit of the earliest filing date.

Under 35 U.S.C. 120, a claim in a U.S. application 
is entitled to the benefit of the filing date of an earlier 
filed U.S. application if the subject matter of the claim 
is disclosed in the manner provided by 35 U.S.C. 112, 
first paragraph, in the earlier filed application. See, 
e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 
47 
USPQ2d 1829 (Fed. Cir. 1998); In re Scheiber, 
587 F.2d 59, 199 USPQ 782 (CCPA 1978). A claim in 
a subsequently filed application that relies on a combination 
of prior applications may not be entitled to 
the benefit of an earlier filing date under 35 U.S.C. 
120 since 35 U.S.C. 120 requires that the earlier filed 
application contain a disclosure which complies with 
35 U.S.C. 112, first paragraph for each claim in the 
subsequently filed application. Studiengesellschaft 
Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564, 
42 USPQ2d 1674, 1677 (Fed. Cir. 1997). 

A claim in the later-filed application is not entitled 
to the benefit of the filing date of the prior-filed application 
if the disclosure of the prior-filed application 
does not enable one skilled in the art to “use” the 
claimed invention. See In re Hafner, 410 F.2d 1403, 
1406, 161 USPQ 783, 786 (CCPA 1969) (“[T]o be 
entitled to the benefits provided by [35 U.S.C. 120], 
the invention disclosed in the “previously filed” application 
must be described therein in such a manner as 
to satisfy all the requirements of the first paragraph of 
[35 U.S.C.] 112, including that which requires the 
description to be sufficient to enable one skilled in the 
art to use the [invention].”). 

Where the prior application (a nonprovisional 
application) is found to be fatally defective because of 
insufficient disclosure to support allowable claims, a 
later-filed 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 Van 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” 
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); and Ex parte 
Hageman, 179 USPQ 747 (Bd. App. 1971).

II.TIME FOR FILING LATER-FILED APPLICATIONS

A.Claiming the Benefit of Provisional Applications

When a later-filed application is claiming the benefit 
of a prior-filed provisional application under 
35 
U.S.C. 119(e), the nonprovisional application must 
be filed not later than 12 months after the date on 
which the provisional application was filed. If the day 
that is 12 months after the filing date of a provisional 
application falls on a Saturday, Sunday, or Federal 
holiday within the District of Columbia, the nonprovisional 
application may be filed on the next succeeding 
business day. See 35 U.S.C. 21(b), 37 CFR 1.7(b), and 
MPEP § 201.04(b) and § 505.

Public Law 106-113 amended 35 U.S.C. 119(e)(2) 
to eliminate the copendency requirement for a nonprovisional 
application claiming benefit of a provisional 
application. 35 U.S.C. 119(e)(2) as amended by 
Public Law 106-113 is effective as of November 29, 
1999 and applies to any provisional applications filed 
on or after June 8, 1995 but has no effect on any 
patent which is the subject of litigation in an action 
commenced before November 29, 1999. Although a 
nonprovisional application claiming the benefit of a 
provisional application is not required to be copending 
with the provisional application, abandonment of 
a provisional application for failure to pay the basic 
filing fee would indicate that the nonprovisional 
application could not claim the benefit of the provisional 
application because the basic filing fee was not 
paid within the time period set forth in 37 CFR 
1.53(g) as required by 37 CFR 1.78(a)(4).

Applicant may claim the benefit of a provisional 
application by claiming the benefit of an intermediate 
copending nonprovisional application. The later-filed 
application must claim the benefit of the intermediate 
nonprovisional application under 35 U.S.C. 120, 121, 
or 365(c); the intermediate application must be filed 
not later than 12 months after the filing date of the 
provisional application; and both the later-filed application 
and the intermediate application must claim the 
benefit of the provisional application under 35 U.S.C. 
119(e).

B.Claiming the Benefit of Nonprovisional Applications 
— Copendency

When a later-filed application is claiming the benefit 
of a prior-filed nonprovisional application under 
35 
U.S.C. 120, 121, or 365(c), the later-filed application 
must be copending with the prior application or 
with an intermediate nonprovisional application similarly 
entitled to the benefit of the filing date of the 
prior application. Copendency is defined in the clause 
which requires that the later-filed application must be 
filed before: (A) the patenting of the prior application; 
(B) the abandonment of the prior application; or (C) 
the termination of proceedings in the prior application.


If the prior application issues as a patent, it is sufficient 
for the later-filed application to be copending 
with it if the later-filed application is filed on the same 
date, or before the date that the patent issues on the 
prior application. Thus, the later-filed application may 
be filed under 37 CFR 1.53(b) while the prior application 
is still pending before the examiner, or is in issue, 
or even between the time the issue fee is paid and the 
patent issues. Patents usually will be published within 
four weeks of payment of the issue fee. Applicants are 
encouraged to file any continuing applications no 
later than the date the issue fee is paid, to avoid issuance 
of the prior application before the continuing 
application is filed.

If the prior application is abandoned, the later-filed 
application must be filed before the abandonment in 
order for it to be copending with the prior application. 
The term “abandoned,” refers to abandonment for 
failure to prosecute (MPEP § 711.02), express abandonment 
(MPEP § 711.01), abandonment for failure 
to pay the issue fee (37 CFR 1.316), and abandonment 
for failure to notify the Office of a foreign filing after 
filing a nonpublication request under 35 U.S.C. 
122(b)(2)(B)(iii) (MPEP § 1124).

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, the proceeding is terminated when the 
mandate is issued by the Court. There are several 
other situations in which proceedings are terminated 
as is explained in MPEP § 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 
later-filed application may be referred to as a continuing 
application when the prior application is not a provisional 
application. Continuing applications include 
those applications which are called divisions, continuations, 
and continuations-in-part. The statute is so 
worded that the prior application may contain more 
than the later-filed application, or the later-filed application 
may contain more than the prior application, 
and in either case the later-filed application is entitled 
to the benefit of the filing date of the prior application 
as to the common subject matter disclosed in compliance 
with 35 U.S.C. 112, first paragraph.

A later-filed application which is not copending 
with the prior application (which includes those called 
"substitute" applications as set forth in MPEP 
§ 201.09) is not entitled to the benefit of the filing 
date of the prior application. Therefore, prior art 
against the claims of the later-filed application is 
determined based on the filing date of the later-filed 
application. An applicant is not required to refer to 
such prior application(s) in an application data sheet 
or in the specification of the later-filed application, 
but is required to otherwise call the examiner’s attention 
to the prior application if it or its contents or prosecution 
is material to patentability of the later-filed 
application as defined in 37 CFR 1.56(b).

III.REFERENCE TO PRIOR APPLICATION(S)

The third requirement of the statute is that the later-
filed application must contain a specific reference to 
the prior application. This should appear as the first 
sentence(s) of the specification following the title 
preferably as a separate paragraph (37 
CFR 1.78(a)) 
and/or in an application data sheet (37 CFR 1.76). If 
the specific reference is only contained in the application 
data sheet, then the benefit claim information will 
be included on the front page of any patent or patent 
application publication, but will not be included in the 
first sentence(s) of the specification. When a benefit 
claim is submitted after the filing of an application, 
the reference to the prior application cannot include 
an incorporation by reference statement of the prior 
application, unless an incorporation by reference 
statement of the prior application was presented upon 
filing of the application. See Dart Indus. v. Banner, 
636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980).

A.Reference to Prior Nonprovisional Applications

Except for benefit claims to the prior application in 
a continued prosecution application (CPA), benefit 
claims under 35 U.S.C. 120, 121, and 365(c) must 
identify the prior application by application number, 
or by international application number and international 
filing date, and indicate the relationship between 
the applications. See 37 CFR 1.78(a)(2)(i). The 
relationship between the applications is whether the 
instant application is a continuation, divisional, or 
continuation-in-part of the prior nonprovisional application. 
An example of a proper benefit claim is “this 
application is a continuation of prior Application No. 
---, filed ---.” A benefit claim that merely states that 
“this application claims the benefit of Application No. 
---, filed ---” does not comply with 35 U.S.C. 120 and 
37 CFR 1.78(a)(2)(i), since the relationship between 
the applications is not stated. In addition, a benefit 
claim that merely states that “this application is a continuing 
application of Application No. ---, filed ---” 
does not comply with 35 U.S.C. 120 and 37 CFR 
1.78(a)(2)(i) since the proper relationship, which includes 
the type of continuing (i.e., continuation, divisional, 
or continuation-in-part) application, is not 
stated.

A request for a CPA filed under 37 CFR 1.53(d) is 
itself the specific reference required by 35 U.S.C. 120and 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(s) of the specification 
following the title, or in an application data sheet, to a 
prior application assigned the same application number 
is not required and may not be made. Any such 
reference should be deleted. 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 a nonprovisional application (other than a 
CPA) is entitled under 35 U.S.C. 120 to an earlier 
U.S. effective filing date, a statement such as “This is 
a divisional (or continuation, or continuation-in-part, 
as appropriate) application of Application No. ---, 
filed ---” should appear as the first sentence(s) of the 
specification or in an application data sheet, except in 
the case of design applications where it should appear 
as set forth in MPEP § 1504.20. In the case of an 
application filed under 37 
CFR 1.53(b) as a divisional, 
continuation or continuation-in-part of a CPA, 
there should be only one reference to the series of 
applications assigned the same application number, 
with the filing date cited being that of the original 
noncontinued application. Where a nonprovisional 
application is claiming the benefit under 35 U.S.C. 
120 of a prior national stage application under 
35 
U.S.C. 371, a suitable reference would read “This 
application is a continuation of U.S. Application No. 
08/---, which was the National Stage of International 
Application No. PCT/DE95/---, filed ---.” 

Any benefit claim that does not both identify a prior 
application by its application number and specify a 
relationship between the applications will not be considered 
to contain a specific reference to a prior application 
as required by 35 U.S.C. 120. Such benefit 
claim may not be recognized by the Office and may 
not be included on the filing receipt even if the claim 
appears in the first sentence(s) of the specification or 
an application data sheet. As a result, publication of 
the application may not be scheduled as a function of 
the prior application’s filing date. If the Office does 
not recognize a benefit claim under 35 U.S.C. 120because it does not contain the required reference and 
the time period set forth in 37 CFR 1.78(a)(2)(ii) for 
submitting the required reference has expired, applicant 
must submit a petition under 37 CFR 1.78(a)(3) 
and the surcharge set forth in 37 CFR 1.17(t) in order 
for the Office to accept the unintentionally delayed 
claim under 35 U.S.C. 120 since the application will 
not have been scheduled for publication on the basis 
of the prior application’s filing date.

To specify the relationship between the applications, 
applicant must specify whether the 
application 
is a continuation, divisional, or continuation-
in-part of the prior application. Note that the 
terms are exclusive. An application cannot be, for 
example, both a continuation and a divisional or a 
continuation and a continuation-in-part of the same 
application. Moreover, if the benefit of more than one 
nonprovisional application is claimed, then the relationship 
between each application (i.e., continuation, 
divisional, or continuation-in-part) must be specified 
in order to establish copendency throughout the entire 
chain of prior-filed applications. For example, a statement 
that “this application claims the benefit of 
Application Nos. C, B, and A” or “this application is a 
continuing application of Application Nos. C, B, and 
A” is improper. Applicant instead must state, for 
example, that “this application is a continuation of 
Application No. C, filed ---, which is a continuation of 
Application No. B, filed ---, which is a continuation of 
Application No. A, filed ---.

B.Reference to Prior Provisional Applications

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(s) of the description 
or in an application data sheet. 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. 
10/---, filed ---, which claims the benefit of U.S. Provisional 
Application No. 60/---, filed ---.”. In the case 
of design applications, it should appear as set forth in 
MPEP § 1504.20. 

The relationship (i.e., continuation, divisional, or 
continuation-in-part) is not required and should not be 
specified when a prior provisional application is being 
claimed under 35 U.S.C. 119(e). No relationship 
should be specified because whenever a priority claim 
to a provisional application under 35 U.S.C. 119(e) is 
made, it is implicit that the relationship is “nonprovisional 
application of a provisional application.” If a 
relationship between a prior provisional application 
and the nonprovisional application is submitted, it 
may be unclear whether the applicant wishes to claim 
the benefit of the filing date of the provisional application 
under 35 U.S.C. 119(e) or 120. Thus, applicants 
seeking to claim the priority to a provisional 
application under 35 U.S.C. 119(e) should not state 
that the application is a “continuation” of a provisional 
application or that the application claims 
35 
U.S.C. 120 benefit to a provisional application. 
Although 35 U.S.C. 120 does not preclude a benefit 
claim to a provisional application, it is not recommended 
that applicants claim the benefit to a provisional 
application under 35 U.S.C. 120 since such a 
claim could have the effect of reducing the patent 
term, as the term of a patent issuing from such an 
application may be measured from the filing date of 
the provisional application pursuant to 35 U.S.C. 
154(a)(2).

C.Benefit Claims to Multiple Prior Applications

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 wishes that the pending application have the 
benefit of the filing date of the first filed application, 
applicant must, besides making reference to the intermediate 
application, also make reference to the first 
application. See Sticker Indus. Supply Corp. v. Blaw-
Knox Co., 405 F.2d 90, 160 USPQ 177 (7th Cir. 1968) 
and Hovlid v. Asari, 305 F. 2d 747, 134 USPQ 162 
(9th Cir. 1962). The reference to the prior applications 
must identify all of the prior applications and 
indicate 
the relationship (i.e., continuation, divisional, or continuation-
in-part) between each nonprovisional application 
in order to establish copendency throughout the 
entire chain of prior applications. Appropriate references 
must be made in each intermediate application 
in the chain of prior applications. If an applicant 
desires, for example, the following benefit claim: 
“this application is a continuation of Application No. 
C, filed ---, which is a continuation of Application No. 
B, filed ---, which claims the benefit of provisional 
Application No. A, filed ---,” then Application No. C 
must have a reference to Application No. B and provisional 
Application No. A, and Application No. B must 
have a reference to provisional Application No. A.

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 nonprovisional application that directly claims 
the benefit of a provisional application under 
35 
U.S.C. 119(e) must be filed within 12 months from 
the filing date of the provisional application. 
Although an application that itself directly claims the 
benefit of a provisional application is not required to 
specify the relationship to the provisional application, 
if the instant nonprovisional application is not filed 
within the 12 month period, but claims the benefit of 
an intermediate nonprovisional application under 
35 
U.S.C. 120 that was filed within 12 months from 
the filing date of the provisional application and 
claimed the benefit of the provisional application, the 
intermediate application must be clearly identified as 
claiming the benefit of the provisional application so 
that the Office can determine whether the intermediate 
nonprovisional application was filed within 12 
months of the provisional application and thus, 
whether the claim is proper. Applicant must state, for 
example, “this application is a continuation of Application 
No. C, filed ---, which is a continuation of 
Application No. B, filed ---, which claims the benefit 
of provisional Application No. A, filed ---.” A benefit 
claim that merely states “this application claims the 
benefit of nonprovisional Application Nos. C and B, 
and provisional Application No. A” would be 
improper. Where the benefit of more than one provisional 
application is being claimed, the intermediate 
nonprovisional application(s) claiming the benefit of 
each provisional application must be indicated. Applicant 
must state, for example, “this application is continuation 
of Application No. D, filed ---, which is a 
continuation-in-part of Application No. C, filed ---, 
Application No. D claims the benefit of provisional 
Application No. B, filed ---, and Application No. C 
claims the benefit of provisional Application No. A, 
filed ---.” If a benefit claim to a provisional application 
is submitted without an indication that an intermediate 
application directly claims the benefit of the 
provisional application and the instant nonprovisional 
application is not filed within the 12 month period or 
the relationship between each nonprovisional application 
is not indicated, the Office will not recognize 
such benefit claim and will not include the benefit 
claim on the filing receipt. Therefore, a petition under 
37 CFR 1.78(a) and the surcharge set forth in 37 CFR 
1.17(t) will be required if the intermediate application 
and the relationship of each nonprovisional application 
are not indicated within the period set forth in 
37 CFR 1.78(a).

D.Reference Must Be Included in the Specification 
or an Application Data Sheet (ADS)

The reference required by 37 CFR 1.78(a)(2) or 
(a)(5) must be included in an ADS or the specification 
must contain or be amended to contain such reference 
in the first sentence(s) following the title. If applicant 
is claiming the benefit of multiple prior applications, 
the reference to the prior applications may be in a 
continuous string of multiple sentences at the beginning 
of the specification. The multiple sentences must 
begin as the first sentence after the title, and any additional 
sentence(s) including a benefit claim must follow 
the first sentence and not be separated from the 
first sentence by any other sentence not making a benefit 
claim. If an applicant includes a benefit claim in 
the application but not in the manner specified by 
37 
CFR 1.78(a) (e.g., if the claim is included in an 
oath or declaration or the application transmittal letter) 
within the time period set forth in 37 CFR 1.78(a), 
the Office will not require a petition under 37 CFR 
1.78(a) and the surcharge under 37 CFR 1.17(t) to 
correct the claim if the information concerning the 
claim was recognized by the Office as shown by its 
inclusion on the filing receipt. If, however, a claim is 
not included in the first sentence(s) of the specification 
or in an ADS and is not recognized by the Office 
as shown by its absence on the filing receipt, the 
Office will require a petition under 37 CFR 1.78(a)
and the surcharge to correct the claim. The Office 
may not recognize any benefit claim where there is no 
indication of the relationship between the nonprovisional 
applications or no indication of the intermediate 
nonprovisional application that is directly 
claiming the benefit of the provisional application. 
Even if the Office has recognized a benefit claim by 
entering it into the Office’s database and including it 
on applicant’s filing receipt, the benefit claim is not a 
proper benefit claim under 35 U.S.C. 119(e) or 35 
U.S.C. 120 and 37 CFR 1.78 unless the reference is 
included in an ADS or in the first sentence(s) of the 
specification and all other requirements are met. 

E.Examiners Should Require the Reference if 
Missing

In view of this requirement, the right to rely on a 
prior application may be waived by an applicant if a 
reference to the prior application is not included in the 
later-filed application. If the examiner is aware of the 
fact that an application is a continuing application of a 
prior application or the applicant fails to submit the 
reference to the prior application in compliance with 
37 CFR 1.78(a) (e.g., the reference was submitted in 
the transmittal letter but not in the first sentence(s) of 
the specification or in an application data sheet), 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.

F.Correcting or Adding a Benefit Claim After 
Filing

The Office will not grant a request for a corrected 
filing receipt to include a benefit claim unless the 
proper reference to the prior application is included in 
the first sentence(s) of the specification or an ADS 
within the time period required by 37 CFR 1.78(a) 
with a few exceptions. See subsection V., “TIME 
PERIOD FOR MAKING A CLAIM FOR BENEFIT 
UNDER 37 CFR 1.78(a)(2) AND (a)(5)”. If the 
proper reference was previously submitted, a copy of 
the amendment, the first page of the specification, or 
the ADS containing the benefit claim should be 
included with the request for a corrected filing receipt. 
The Office plans to notify applicants on or with the 
filing receipt that a benefit claim may not have been 
recognized because the benefit claim was improper 
but applicants are advised that only the benefit claims 
that are listed on the filing receipt have been recognized 
by the Office. Therefore, applicants should 
carefully and promptly review their filing receipts in 
order to avoid the need for a petition (37 CFR 
1.78(a)(3) or (a)((6)) and the surcharge.

If a benefit claim is added after the time period 
required by 37 CFR 1.78(a), a petition and the surcharge 
are required. See subsection V. “TIME 
PERIOD FOR MAKING A CLAIM FOR BENEFIT 
37 CFR 1.78(a)(2) AND (a)(5).” Any petition under 
37 CFR 1.78(a)(3) or (a)(6) must be accompanied by 
an amendment to the specification or an ADS unless 
the proper reference was previously submitted. In 
addition to the petition under 37 CFR 1.78 and the 
amendment or ADS, to add a benefit claim it may be 
necessary for applicant to file one of the following, 
depending on the status of the application:

(A)a request for continued examination (RCE) 
under 37 CFR 1.114, if the application is under a final 
rejection or has been allowed (see MPEP §706.07(h)). 
An amendment or ADS filed after final rejection or 
allowance is not entered as a matter of right and must 
be filed in compliance with 37 CFR 1.116 or 1.312, 
respectively; or

(B)a reissue application or a request for a certificate 
of correction under 37 CFR 1.323, if appropriate 
(see MPEP §§ 1402 and 1481), if the application has 
issued as a patent.

An incorporation by reference statement added 
after an application’s filing date is not effective 
because no new matter can be added to an application 
after its filing date (see 35 U.S.C. 132(a)). If an incorporation 
by reference statement is included in an 
amendment to the specification to add a benefit claim 
after the filing date of the application, the amendment 
would not be proper. When a benefit claim is submitted 
after the filing of an application, the reference to 
the prior application cannot include an incorporation 
by reference statement of the prior application unless 
an incorporation by reference statement of the prior 
application was presented upon filing of the application. 
See Dart Indus. v. Banner, 636 F.2d 684, 
207 
USPQ 273 (C.A.D.C. 1980).

G.Deleting Benefit Claims

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 or submitting 
a new application data sheet (no supplemental 
declaration is necessary) to delete any references to 
prior applications. 

The examiner should consider whether any new 
prior art may now be available if a benefit claim is 
deleted. If an applicant is submitting an amendment to 
the specification or an ADS to delete a benefit claim 
after final rejection or action, the amendment or ADS 
will be treated under 37 CFR 1.116 (see MPEP 
§ 714.12 and § 714.13). If the amendment or ADS to 
delete a benefit claim is submitted after the application 
has been allowed, the amendment or ADS will be 
treated under 37 CFR 1.312 (see MPEP § 714.16). A 
deletion of a benefit claim will not delay the publication 
of the application unless the amendment or ADS 
is recognized by the Office within nine weeks prior to 
the projected publication date that was originally calculated 
based on the benefit claim.

A cancellation of a benefit claim to a prior application 
may be considered as a showing that the applicant 
is intentionally waiving the benefit claim to the 
prior application in the instant application. If the 
applicant later files a petition to accept an unintentionally 
delayed claim to add the benefit claim to the 
prior application in the same application from which 
the benefit claim was canceled, the Office may refuse 
to accept such benefit claim because the delay was not 
unintentional.

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(s) of the specification following the 
title, or in an application data sheet, to a prior application 
assigned the same application number is not 
required and should not be made.) The correction or 
entry of the data in the PALM data base can be made 
by technical support staff of the TC. Upon entry of the 
data, a new PALM bib-data sheet should be printed 
and placed in the file. See also MPEP § 707.05 and § 
1302.09.

IV. 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. 37 CFR 1.78(a)(1) and (a)(4) 
require that each prior-filed application must name as 
an inventor at least one inventor named in the later-
filed application and disclose the named inventor’s 
invention claimed in at least one claim of the later-
filed application in the manner provided by the first 
paragraph of 35 U.S.C. 112.

V.TIME PERIOD FOR MAKING A CLAIM 
FOR BENEFIT UNDER 37 CFR 1.78(a)(2) 
AND (a)(5)

The time period requirement under 37 CFR 
1.78(a)(2) and (a)(5) is only applicable to utility or 
plant applications filed on or after November 29, 
2000.

The American Inventors Protection Act of 1999 
(AIPA), Public Law 106-113, amended 35 U.S.C. 119 and 120 to provide that the Office may set a time 
period for the filing of benefit claims and establish 
procedures to accept an unintentionally delayed benefit 
claim. The Office has implemented these statutory 
changes, in part, by amending 37 CFR 1.78 to 
include: (A) a time period within which a benefit 
claim to a prior nonprovisional or provisional application 
must be stated or it is considered waived; and (B) 
provisions for the acceptance of the unintentionally 
delayed submission of a claim to the benefit of a prior 
nonprovisional or provisional application.

If the application is a utility or plant application 
filed under 35 U.S.C. 111(a) on or after November 29, 
2000, the benefit claim of the prior application under 
35 U.S.C. 119(e), 120, 121, or 365(c) must be made 
during the pendency of the application and within the 
later of four months from the actual filing date of the 
later-filed application or sixteen months from the filing 
date of the prior-filed application. If the application 
is a nonprovisional application which entered the 
national stage from an international application after 
compliance with 35 U.S.C. 371, the benefit claim 
must be made within the later of: (1) four months 
from the date on which the national stage commenced 
under 37 U.S.C. 371(b) or (f); or (2) sixteen months 
from the filing date of the prior application. See 37 
CFR 1.78(a)(2)(ii) and (a)(5)(ii). This time period is 
not extendable and a failure to submit the reference 
required by 35 U.S.C. 119(e) and/or 120, where applicable, 
within this time period is considered a waiver 
of any benefit of such prior application(s) under 
35 
U.S.C. 119(e), 120, 121 and 365(c).

If the reference required by 35 U.S.C. 120 and 
37 
CFR 1.78(a)(2) is not submitted within the 
required time period, a petition for an unintentionally 
delayed claim may be filed. The petition must be 
accompanied by: (A) the reference required by 
35 
U.S.C. 120 and 37 CFR 1.78(a)(2) to the prior 
application (unless previously submitted); (B) a surcharge 
under 37 CFR 1.17(t); and (C) a statement that 
the entire delay between the date the claim was due 
under 37 CFR 1.78(a)(2) and the date the claim was 
filed was unintentional. The Director may require 
additional information where there is a question 
whether the delay was unintentional. See 37 CFR 
1.78(a)(3).

Likewise, if the reference required by 35 U.S.C. 
119(e) and 37 CFR 1.78(a)(5) is not submitted within 
the required time period, a petition for an unintentionally 
delayed claim may be filed. The petition for an 
unintentionally delayed benefit claim must be submitted 
during the pendency of the nonprovisional application. 
The petition must be accompanied by: (A) the 
reference required by 35 U.S.C. 119(e) and 37 CFR 
1.78(a)(5) to the prior provisional application (unless 
previously submitted); (B) a surcharge under 37 CFR 
1.17(t); and (C) a statement that the entire delay 
between the date the claim was due under 37 CFR 
1.78(a)(5) and the date the claim was filed was unintentional. 
The Director may require additional information 
where there is a question whether the delay 
was unintentional. See 37 CFR 1.78(a)(6).

Petitions for an unintentionally delayed benefit 
claim should be forwarded to the Office of Petitions. 
See MPEP § 1002.02(b).

If an applicant includes a claim to the benefit of a 
prior application elsewhere in the application but not 
in the manner specified in 37 CFR 1.78(a)(2)(i) and 
(a)(2)(iii) or 37 CFR 1.78(a)(5)(i) and (a)(5)(iii) (e.g., 
if the benefit claim is included in an unexecuted oath 
or declaration or the application transmittal letter) 
within the time period set forth in 37 CFR 
1.78(a)(2)(ii) or (a)(5)(ii), the Office will not require a 
petition and the surcharge under 37 CFR 1.17(t) to 
correct the benefit claim if the information concerning 
the benefit claim contained elsewhere in the application 
was recognized by the Office as shown by its 
inclusion on a filing receipt. This is because the application 
will have been scheduled for publication on the 
basis of such information concerning the benefit 
claim. Applicant must still submit the benefit claim in 
the manner specified in 37 CFR 1.78(a)(2)(i) and 
(a)(2)(iii) or 37 CFR 1.78(a)(5)(i) and (a)(5)(iii) (i.e., 
by an amendment in the first sentence(s) of the specification 
or in an ADS) to have a proper claim under 
35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the benefit 
of a prior application. If, however, an applicant 
includes a benefit claim elsewhere in the application 
and not in the manner specified in 37 CFR 1.78(a), 
and the claim is not recognized by the Office as 
shown by its absence on a filing receipt (e.g., if the 
benefit claim is in a part of the application where benefit 
claims are not conventionally located, such as the 
body of the specification), the Office will require a 
petition and the surcharge under 37 CFR 1.17(t) to 
correct the benefit claim. This is because the application 
will not have been scheduled for publication on 
the basis of the information concerning the benefit 
claim contained elsewhere in the application.

A petition under 37 CFR 1.78(a)(3) and the surcharge 
would not be required for correcting a timely 
submitted benefit claim for the following situations:

(A)Changing the relationship of the applications 
(e.g., changing from "continuation" or "divisional" to 
"continuation-in-part" or from "continuation-in-part" 
to "continuation" or "divisional");

(B)Changing the filing date of a prior-filed nonprovisional 
or provisional application; and

(C)Changing a benefit claim of a prior-filed provisional 
application under 35 U.S.C. 120 (e.g., “This 
application is a continuation of prior-filed provisional 
application No. ---”) to a benefit claim of the same 
provisional application under 35 U.S.C. 119(e) (e.g., 
“This application claims the benefit of prior-filed provisional 
application No. ---”) during the pendency of 
the later-filed application. Note, however: If the later-
filed application has issued as a patent, the correction 
cannot be made by a certificate of correction and 
would not be effective in a reissue application because 
the term of a patent is measured from the prior application’s 
filing date and removing the benefit claim 
under 35 U.S.C. 120, 121, or 365(c) would have the 
effect of lengthening the term of the patent. 

If a benefit claim is filed after the required time 
period and without a petition as required by 37 CFR 
1.78(a)(3) or (a)(6), the applicant should be informed 
that the benefit claim was not entered and that a petition 
needs to be filed using form paragraph 2.39.

VI. ENGLISH TRANSLATION

If benefit is being claimed to a provisional application 
which was filed in a language other than English, 
(A) an English language translation of the provisional 
application, and (B) a statement that the translation is 
accurate, are required to be filed  in the provisional 
application . If a nonprovisional application 
claims the benefit of the filing date of a non-English 
language provisional application, a translation of the 
provisional application and a statement that the translation 
was accurate required by 37 CFR 1.78(a)(5)(iv) 
will not be required to be filed in the provisional 
application, if the translation and statement were filed 
in the nonprovisional application before November 
25, 2005. If the translation and statement were not 
filed in the provisional application or in the nonprovisional 
application before November 25, 2005,
the applicant will be notified in the nonprovisional 
application and given a period of time within which to 
file the translation and statement in the provisional 
application, and a reply in the nonprovisional application 
confirming that the translation and statement 
were filed in the provisional application. In the alternative, 
applicant may reply to the notice by filing an 
amendment or a supplemental application data sheet 
(37 CFR 1.76(c)) withdrawing the benefit claim. In a 
pending nonprovisional application, failure to timely 
reply to such notice will result in the abandonment of 
the nonprovisional application.

VII.THE PRIOR-FILED APPLICATION MUST 
BE ENTITLED TO A FILING DATE

If the prior-filed application is a nonprovisional 
application filed under 35 U.S.C. 111(a), the application 
must be entitled to a filing date as set forth in 
35 
CFR 1.53(b) or (d), and the basic filing fee as set 
forth in 37 CFR 1.16 must have been paid within the 
pendency of the application. See 37 CFR 1.78(a)(1). 
If the prior-filed application is an international application 
designating the United States of America, the 
prior-filed application must be entitled to a filing date 
in accordance with PCT Article 11. If the prior-filed 
application is a provisional application, the provisional 
application must be entitled to a filing date as 
set forth in 37 CFR 1.53(c) and the basic filing fee of 
the provisional application must have been paid 
within the time period set in 37 CFR 1.53(g) (the filing 
fee is paid within the time period set in 37 CFR 
1.53(g) if an extension of time was filed to make a 
response to a notice to file missing parts requiring the 
filing fee timely).

====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). See 
MPEP §1895. 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...”. 

DELAYED SUBMISSION OF BENEFIT CLAIM 
IN INTERNATIONAL APPLICATION

A petition under 37 CFR 1.78(a)(3) for accepting 
an unintentionally delayed benefit claim and the surcharge 
under 37 CFR 1.17(t) are required to add a 
benefit claim under 35 U.S.C. 120 and 365(c) in an 
abandoned international application designating the 
United States filed on or after November 29, 2000, 
even when the international application did not enter 
the national stage under 35 U.S.C. 371. For example, 
when filing a “bypass” continuation application under 
35 U.S.C. 111(a) that claims the benefit of an international 
application designating the United States
with a filing date on or after November 29, 2000 that 
could have but did not claim the benefit of an earlier 
U.S. application, and the benefit claim is to be added 
to the international application, a petition under 
37 CFR 1.78(a)(3) must be filed in the international 
application.

===201.12 Title to an Application Claiming Benefit of an Earlier Application===

The assignment records of the USPTO will only 
reflect an assignment of a divisional application or 
continuation application (or any other application) if a 
request for recordation in compliance with 37 CFR 
3.28, accompanied by the required fee (37 CFR 3.41), 
is filed. See MPEP § 306. When the assignment is in 
a provisional application, see MPEP § 306.01.

===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) and (f), and 37 CFR 1.55.

'''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, or in a WTO member country, 
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)(1) No application for patent shall be entitled to this right 
of priority unless a claim is filed in the Patent and Trademark 
Office, identifying the foreign application by specifying the application 
number on that foreign application, the intellectual property 
authority or country in or for which the application was filed, and 
the date of filing the application, at such time during the pendency 
of the application as required by the Director.

(2)The Director may consider the failure of the applicant 
to file a timely claim for priority as a waiver of any such claim. 
The Director may establish procedures, including the payment of 
a surcharge, to accept an unintentionally delayed claim under this 
section.

(3)The Director may require a certified copy of the original 
foreign application, specification, and drawings upon which it 
is based, a translation if not in the English language, and such 
other information as the Director considers necessary. Any such 
certification shall be made by the foreign intellectual property 
authority in which the foreign application was filed and show the 
date of the application and of the filing of the specification and 
other papers.

(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.

(f)Applications for plant breeder’s rights filed in a WTO 
member country (or in a foreign UPOV Contracting Party) shall 
have the same effect for the purpose of the right of priority under 
subsections (a) through (c) of this section as applications for patents, 
subject to the same conditions and requirements of this section 
as apply to applications for patents.

'''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 (f), 172, and 365(a) and (b).

(1)(i) In an original application filed under 35 
U.S.C. 
111(a), the claim for priority must be presented during the pendency 
of the application, and within the later of four months from 
the actual filing date of the application or sixteen months from the 
filing date of the prior foreign application. This time period is not 
extendable. The claim must identify the foreign application for 
which priority is claimed, as well as any foreign application for 
the same subject matter and having a filing date before that of the 
application for which priority is claimed, by specifying the application 
number, country (or intellectual property authority), day, 
month, and year of its filing. The time periods in this paragraph do 
not apply in an application under 35 U.S.C. 111(a) if the application 
is:

(A)A design application; or

(B)An application filed before November 29, 2000.

(ii)In an application that entered the national stage 
from an international application after compliance with 35 U.S.C. 
371, the claim for priority must be made during the pendency of 
the application and within the time limit set forth in the PCT and 
the Regulations under the PCT.

(2)The claim for priority and the certified copy of the 
foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17must, in any event, be filed 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 
the processing fee set forth in § 1.17(i), but the patent will not 
include the priority claim unless corrected by a certificate of correction 
under 35 
U.S.C. 255 and § 1.323

(3)The Office may require that the claim for priority and 
the certified copy of the foreign application be filed earlier than 
provided in paragraphs (a)(1) or (a)(2) of this section:

(i)When the application becomes involved in an 
interference (see § 41.202 of this title),

(ii)When necessary to overcome the date of a reference 
relied upon by the examiner, or

(iii)When deemed necessary by the examiner.

(4)(i)An English language translation of a non-English 
language foreign application is not required except:

(A)When the application is involved in an interference 
(see § 41.202 of this title),

(B)When necessary to overcome the date of a reference 
relied upon by the examiner, or

(C)When specifically required by the examiner.

(ii)If an English language translation is required, it 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 § 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 or in a WTO member 
country.”

(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)For an original application filed under 
35 
U.S.C. 111(a) (other than a design application) on 
or after November 29, 2000, the claim for priority 
must be presented during the pendency of the application, 
and within the later of four months from the 
actual filing date of the application or sixteen months 
from the filing date of the prior foreign application. 
This time period is not extendable. 

(F)For applications that entered the national 
stage from an international application filed on or 
after November 29, 2000, after compliance with 
35 
U.S.C. 371, the claim for priority must be made 
during the pendency of the application and within the 
time limit set forth in the PCT Article and Regulations.

(G)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.

I.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.

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” follow
ing 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. 
The letter “W” following the name of the country 
indicates the 
basis for priority is membership in the 
World 
Trade Organization (WTO). See 35 U.S.C. 
119(a). The letter “W°” indicates that the country 
became a WTO member after January 1, 1996. See 
http://www.wto.org/english/thewto_e/whatis_e/tif_e/
org6_e.htm for a current list of WTO member countries 
along with their dates of membership. Applications 
for plant breeder’s rights filed in WTO member 
countries and foreign UPOV contracting parties may 
be relied upon for priority pursuant to 35 U.S.C. 
119(f) and MPEP Chapter 1600.

It should be noted that the 
right is based on the country of the foreign filing and 
not upon the citizenship of the applicant.

II.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, the Patent Cooperation 
Treaty (MPEP § 201.13(b)), the Office for Harmonization 
in the Internal Market (OHIM), and the Community 
Plant Variety Office (CPVO) are further 
examples of such treaties.

A.The Priority Claim

 A priority claim need not be in any special form 
and may be a statement signed by a registered attorney 
or agent. A priority claim can be made on filing: 
(A) by including a copy of an unexecuted or executed 
oath or declaration specifying a foreign priority claim 
(see 37 CFR 1.63(c)(2)); or (B) by submitting an 
application data sheet specifying a foreign priority 
claim (see 37 CFR 1.76). 

In claiming priority of a foreign application previously 
filed under such a treaty, certain information 
must be supplied to the U.S. Patent and Trademark 
Office. In addition to the application number and the 
date of the filing of the application, the following 
information is required: (A) the name of the treaty 
under which the application was filed; and (B) 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)(3) authorizes the Office to require 
the applicant to furnish a certified copy of priority 
papers. Applicants are required to submit the certified 
copy of the foreign application specified in 35 U.S.C. 
119(b) or PCT Rule 17 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 the processing fee set 
forth in 37 CFR 1.17(i), but the patent will not include 
the priority claim unless corrected by a certificate of 
correction under 35 U.S.C. 255 and 37 CFR 1.323. 
See 37 CFR 1.55(a)(2). 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 § 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 U.S. 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 U.S. 
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 U.S. 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 U.S. 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 U.S. 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 1-800-PTO-9199 or (571) 
272-1000.

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.

G.Incorporation by Reference

An applicant may incorporate by reference the 
foreign priority application by including, in the U.S. 
application-as-filed, an explicit statement that such 
specifically enumerated foreign priority application or 
applications are “hereby incorporated by reference.” 
The statement must appear in the specification. See 
37 
CFR 1.57(b) and MPEP § 608.01(p). For U.S. 
applications filed prior to September 21, 2004, the 
incorporation by reference statement may appear in 
the transmittal letter or in the specification. The inclusion 
of this statement of incorporation by reference of 
the foreign priority application will permit an applicant 
to amend the U.S. application to include subject 
matter from the foreign priority application(s), without 
raising the issue of new matter. Thus, the incorporation 
by reference statement can be relied upon to 
permit the entering of a portion of the foreign priority 
application into the U.S. application when a portion of 
the foreign priority application has been inadvertently 
omitted from the U.S. application, or to permit the 
correction of translation error in the U.S. application 
where the foreign priority application is in a non-
English language.

For U.S. applications filed on or after September 
21, 2004, a claim under 37 CFR 1.55 for priority of a 
prior-filed foreign application that was present on the 
filing date of the U.S. application is considered an 
incorporation by reference of the prior-filed foreign 
priority application as to inadvertently omitted material, 
subject to the conditions and requirements of 
37 
CFR 1.57(a). The purpose of 37 CFR 1.57(a) is to 
provide a safeguard for applicants when all or a portion 
of the specification and/or drawing(s) is (are) 
inadvertently omitted from an application. For U.S. 
applications filed on or after September 21, 2004, 
applicants are encouraged to provide an explicit incorporation 
by reference statement to the prior-filed foreign 
priority application(s) for which priority is 
claimed under 37 CFR 1.55 if applicants do not wish 
the incorporation by reference to be limited to inadvertently 
omitted material pursuant to 37 CFR 
1.57(a). See 37 CFR 1.57(b) and MPEP § 608.01(p)
for discussion regarding explicit incorporation by reference.

III.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. 

====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 boththe earlier application and the U.S. patent application 
were filed in their respective countries following this 
effective date. 

====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 Director 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) and (f), 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 or her 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) and (f), 
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 Director 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 U.S. Patent and 
Trademark Office. 

PCT 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 that priority document has already 
been filed with the receiving Office together with the international 
application in which the priority claim is made, and subject to 
paragraphs (b) and (bbis), 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.

(bbis)Where the priority document is, in accordance with the 
Administrative Instructions, available to the receiving Office or to 
the International Bureau from a digital library, the applicant may, 
as the case may be, instead of submitting the priority document:

(i)request the receiving Office to obtain the priority document 
from such digital library and transmit it to the International 
Bureau; or

(ii)request the International Bureau to obtain the priority 
document from such digital library.

Such request shall be made not later than 16 months after 
the priority date and may be subjected by the receiving Office or 
the International Bureau to the payment of a fee.

(c)If the requirements of none of the three preceding paragraphs 
are complied with, any designated Office may, subject to 
paragraph (d), 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.

(d)No designated Office shall disregard the priority claim 
under paragraph (c) if the earlier application referred to in paragraph 
(a) was filed with it in its capacity as national Office or if 
the priority document is, in accordance with the Administrative 
Instructions, available to it from a digital library.

17.2. Availability of Copies 

(a)Where the applicant has complied with Rule 17.1(a), (b) 
or (bbis), 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(b), not to have been made.

'''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 or international application filed with the United 
States Receiving Office 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 United States 
Receiving Office not later than 16 months after the priority date, 
that the United States Patent and Trademark Office prepare a certified 
copy of the prior application for transmittal to the International 
Bureau (PCT Article 8 and PCT Rule 17). The fee for 
preparing a certified copy is set forth in § 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 26bis.1.

===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.

For nonprovisional applications filed prior to 
November 29, 2000, 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 Director 
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 continuing application 
provided the parent application has been filed 
within 12 months from the date of the earliest foreign 
filing. See In re Tangsrud, 184 USPQ 746 
(Comm’r Pat. 1973). If the claim for priority and the 
certified copy of the priority document are not filed in 
the continuing application within the time period set 
in 37 CFR 1.55, the right of priority is lost. A reissue 
was granted in Brenner v. State of Israel, 400 F.2d 
789, 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 Director authority to require a translation of 
the foreign documents if not in the English language 
and such other information as the Director may deem 
necessary.

For original applications filed under 
35 
U.S.C.111(a) (other than a design application) on 
or after November 29, 2000, the requirements of the 
statute are that the applicant must (a) file a claim for 
the right of priority and (b) identify the original foreign 
application by specifying the application number 
of the foreign application, the intellectual property 
authority or country in which the application was filed 
and the date of filing of the application. These papers 
must be filed within a certain time limit. The time 
limit specified in 35 U.S.C.119(b)(1) is that the claim 
for priority and the required identification information 
must be filed at such time during the pendency of the 
application as set by the Director. The Director has by 
rule set this time limit as the later of four months from 
the actual filing date of the application or sixteen 
months from the filing date of the prior foreign application. 
See 37 CFR 1.55(a)(1)(i). This time period is 
not extendable. In an application that entered the 
national stage from an international application after 
compliance with 35 U.S.C. 371, the claim for priority 
must be made during the pendency of the application 
and within the time limit set forth in the PCT and the 
Regulations under the PCT. See 37 CFR 
1.55(a)(1)(ii). Claims for foreign priority not presented 
within the time period specified in 37 CFR 
1.55(a)(1)(i) are considered to have been waived. If a 
claim for priority under 35 U.S.C.119(a) - (d) or (f), or 
365(a) is presented after the time period set in 37 CFR 
1.55(a)(1)(i), the claim may be accepted if it includes 
the required identification information and is accompanied 
by a grantable petition to accept the unintentionally 
delayed claim for priority. See 37 CFR 
1.55(c). In addition, 35 U.S.C. 119(b)(3) gives the 
Director authority to require a certified copy of the 
foreign application and an English translation if the 
foreign application is not in the English language and 
such other information as the Director may deem necessary. 
The Director has by rule, 37 CFR 1.55(a)(2), 
required a certified copy of the foreign application to 
be submitted before the patent is granted. If the certified 
copy of the foreign application is submitted after 
the payment of the issue fee, it must be accompanied 
by the processing fee set forth in 37 
CFR 1.17(i). See 
MPEP § 201.14(a). 

Unless provided in an application data sheet, 
37 
CFR 1.63 requires that the oath or declaration must 
identify the foreign application for patent or inven
tor’s certificate for which priority is claimed under 
37 
CFR 1.55, 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.

====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 (f), 172, and 365(a) and (b).

(1)(i) In an original application filed under 35 
U.S.C. 
111(a), the claim for priority must be presented during the pendency 
of the application, and within the later of four months from 
the actual filing date of the application or sixteen months from the 
filing date of the prior foreign application. This time period is not 
extendable. The claim must identify the foreign application for 
which priority is claimed, as well as any foreign application for 
the same subject matter and having a filing date before that of the 
application for which priority is claimed, by specifying the application 
number, country (or intellectual property authority), day, 
month, and year of its filing. The time periods in this paragraph do 
not apply in an application under 35 U.S.C. 111(a) if the application 
is:

(A)A design application; or

(B)An application filed before November 29, 2000.

(ii)In an application that entered the national stage 
from an international application after compliance with 35 U.S.C. 
371, the claim for priority must be made during the pendency of 
the application and within the time limit set forth in the PCT and 
the Regulations under the PCT.

(2)The claim for priority and the certified copy of the 
foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17must, in any event, be filed 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 
the processing fee set forth in § 1.17(i), but the patent will not 
include the priority claim unless corrected by a certificate of correction 
under 35 
U.S.C. 255 and § 1.323

(3)The Office may require that the claim for priority and 
the certified copy of the foreign application be filed earlier than 
provided in paragraphs (a)(1) or (a)(2) of this section:

(i)When the application becomes involved in an 
interference (see § 41.202 of this title),

(ii)When necessary to overcome the date of a reference 
relied upon by the examiner, or

(iii)When deemed necessary by the examiner.

(4)(i)An English language translation of a non-English 
language foreign application is not required except:

(A)When the application is involved in an interference 
(see § 41.202 of this title),

(B)When necessary to overcome the date of a reference 
relied upon by the examiner, or

(C)When specifically required by the examiner.

(ii)If an English language translation is required, it 
must be filed together with a statement that the translation of the 
certified copy is accurate.

(c)Unless such claim is accepted in accordance with the 
provisions of this paragraph, any claim for priority under 35 
U.S.C. 119(a)-(d) or 365(a) not presented within the time period 
provided by paragraph (a) of this section is considered to have 
been waived. If a claim for priority under 35 U.S.C. 119(a)-(d) or 
365(a) is presented after the time period provided by paragraph (a) 
of this section, the claim may be accepted if the claim identifying 
the prior foreign application by specifying its application number, 
country (or intellectual property authority), and the day, month, 
and year of its filing was unintentionally delayed. A petition to 
accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or 
365(a) must be accompanied by:

(1)The claim under 35 U.S.C. 119(a)-(d) or 365(a) and 
this section to the prior foreign application, unless previously submitted;

(2)The surcharge set forth in § 1.17(t); and

(3)A statement that the entire delay between the date the 
claim was due under paragraph (a)(1) of this section and the date 
the claim was filed was unintentional. The Director may require 
additional information where there is a question whether the delay 
was unintentional.

It should first be noted that the Director has by rule 
specified an earlier ultimate date than the date the 
patent is granted for filing a claim and a certified 
copy. For original applications filed under 35 U.S.C. 
111(a) (other than a design application) on or after 
November 29, 2000, a claim for foreign priority must 
be presented during the pendency of the application, 
and within the later of four months from the actual filing 
date of the application or sixteen months from the 
filing date of the prior foreign application. See 
37 
CFR 1.55(a)(1)(i). This time period is not extendable. 
For applications that entered the national stage 
from an international application filed on or after 
November 29, 2000, after compliance with 35 U.S.C. 
371, the claim for priority must be made during the 
pendency of the application and within the time limit 
set forth in the PCT and the Regulations under the 
PCT. Any foreign priority claim not presented within 
the time period set in 37 CFR 1.55(a)(1)(i) is considered 
to have been waived. If a claim for foreign priority 
is presented after the time period set in 37 CFR 
1.55(a)(1)(i), the claim may be 
accepted if the claim 
properly identifies the prior foreign application and is 
accompanied by a grantable petition to accept an 
unintentionally delayed claim for priority. A grantable 
petition to accept an unintentionally delayed claim for 
priority must include: (1) the claim (i.e., the claim 
required by 35 U.S.C. 119(a)-(d) and (f) and 37 CFR 
1.55) for priority to the prior foreign application, 
unless previously submitted; (2) the surcharge set 
forth in 37 CFR 1.17(t); and (3) a statement that the 
entire delay between the date the claim was due under 
37 CFR 1.55(a)(1) and the date the claim was filed 
was unintentional. The Director may require additional 
information where there is a question whether 
the delay was unintentional. See 37 
CFR1.55(c). 

For nonprovisional applications filed prior to 
November 29, 2000 and for design applications, a 
claim for foreign priority may be made up until the 
time when the patent is granted. Priority claims and 
certified copies of foreign applications filed after payment 
of the issue fee will be placed in the application 
file but will not be reviewed, as explained in further 
detail below.

For all applications, assuming the claim for foreign 
priority has been made, the latest time at which the 
papers may be filed without a processing fee (37 CFR 
1.17(i)) is the date of the payment of the issue fee, 
except that, under certain circumstances, they are 
required at an earlier date. 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.

The claim for foreign priority and the certified copy 
of the foreign application specified in 35 U.S.C. 
119(b) or PCT Rule 17 must, in any event, be filed 
before the patent is granted. If the claim for foreign 
priority or the certified copy of the foreign application 
is filed after the date of payment of the issue fee but 
prior to the date of grant of the patent, the priority 
claim or certified copy must be accompanied by a 
processing fee set forth in 37 CFR 1.17(i). The priority 
claim or certified copy will be placed in the file 
record but there will be no review of the papers and 
the patent when published will not include the priority 
claim. A certificate of correction under 35 U.S.C. 255 
and 37 CFR 1.323 can be filed to have the priority 
claim or certified copy considered after publication of 
the patent. In addition, for original applications filed 
under 35 U.S.C. 111(a) (other than a design application) 
on or after November 29, 2000, a grantable petition 
to accept an unintentionally delayed claim for 
priority under 37 CFR 1.55(c) must also be filed with 
the certificate of correction.

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)(2) 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.

====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 U.S. 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 
§ 201.15 and in cases of interferences.

The papers required are the claim for priority and 
the certified copy of the foreign application. For original 
applications filed under 35 U.S.C. 111(a) (other 
than design applications) on or after November 29, 
2000, the claim for foreign priority must identify the 
foreign application for which priority is claimed by 
specifying the application number, country (or intellectual 
property authority), day, month, and year of its 
filing. In addition, the claim for priority must also 
identify any foreign application for the same subject 
matter having a filing date before that of the foreign 
application for which priority is claimed. 

For all applications, the claim to priority need be in 
no special form, and may be made by a person authorized 
to sign correspondence under 37 
CFR1.33(b). 
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, 
an application data sheet (37 CFR1.76), or the 
application transmittal letter with the recitation of the 
foreign application. See MPEP § 201.13, paragraph 
A.

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. In addition, for original applications filed 
under 35 U.S.C. 111(a) (other than design applications) 
on or after November 29, 2000, the examiner 
should make sure that the claim for foreign priority is 
timely. Examiners may use form paragraph 2.21.01 to 
notify applicant that the foreign priority claim is 
untimely.

I. 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 
associate them with the application .

II. 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 § 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) or (f) 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. 

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 § 707.

III. 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) and (f) 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 U.S. 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 is 
silent on this subject.

Therefore, the U.S. 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), prior to amendment by the 
American Inventors Protection Act of 1999 (AIPA), 
Public Law 106-113, 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. Effective November 29, 2000, the AIPA 
amended 35 U.S.C. 119(b)(3) to state that certification 
“…shall be made by the foreign intellectual property 
authority in which the foreign application was filed.” 
35 U.S.C. 119(b)(3) as amended by the AIPA applies 
to applications filed under 35 U.S.C 111(a) and international 
applications complying with 35 U.S.C. 371, 
with filing dates on or after November 29, 2000.

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.

====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.

I.UNTIMELY CLAIM FOR PRIORITY

If the foreign priority claim in an original application 
filed under 35 U.S.C.111(a) (other than a design 
application) on or after November 29, 2000 is submitted 
after the time period set in 37 CFR 1.55(a)(1)(i)
and without a petition under 37 CFR 1.55(c), the 
examiner may use form paragraph 2.21.01 to notify 
applicant that the foreign priority claim will not be 
entered.

II.NO IRREGULARITIES AND PRIORITY 
CLAIM TIMELY

When the papers under 35 U.S.C. 119(a)-(d) are 
received within the time period set forth in 37 CFR 
1.55(a)(1), if applicable, they are entered into the 
application file history. Assuming that the papers are 
timely and 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.

III.PAPERS INCONSISTENT WITH A TIMELY 
PRIORITY CLAIM

If the certified copy filed does not correspond to the 
foreign application identified in the application oath 
or declaration or an application data sheet, or if the 
application oath or declaration or an application data 
sheet 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 Office action, after acknowledging 
receipt of the papers, should require the applicant to 
explain the inconsistency and to file a new oath 
or 
declaration or an application data sheet stating correctly 
the facts concerning foreign applications 
required by 37 CFR 1.63 by using form paragraph 
2.21.

VI.SOME FOREIGN APPLICATIONS FILED 
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.” 

IX.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. 
For Image File Wrapper (IFW) processing, see 
the IFW Manual.

When the claim for foreign priority or the certified 
copy of the foreign application is filed after the date 
of payment of the issue fee but prior to the date of 
grant of the patent, the priority claim or certified copy 
must be accompanied by a processing fee set forth in 
37 CFR 1.17(i). The priority claim or certified copy 
will be placed in the file record but there will be no 
review of the papers and the patent when published 
will not include the priority claim. A certificate of 
correction under 35 U.S.C. 255 and 37 CFR 1.323 can 
be filed to have the priority claim or certified copy 
considered after publication of the patent. In addition, 
for original applications filed under 35 U.S.C.111(a)
(other than design applications) on or after November 
29, 2000, a grantable petition to accept an unintentionally 
delayed claim for priority under 37 CFR 
1.55(c) must be filed with the certificate of correction.

X.RETURN OF PAPERS

For Image File Wrapper (IFW) processing, see the 
IFW Manual. 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 entered into the 
application file history, it is not necessary to secure 
approval of the Director of the United States Patent 
and Trademark Office for their return but they should 
be sent to the TC Director for cancellation of the 
Office stamps. Where the papers have been 
entered into the application file history, a request 
for permission to return the papers should be 
addressed to the Director of the United States Patent 
and Trademark Office and forwarded to the TC Director 
for approval. Where the return is approved, the 
written approval should be entered into the application 
file history. 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 Commissioner 
for Patents.

XI.NOTATION IN FILE HISTORY RE-
GARDING FOREIGN PRIORITY AP-
PLICATION

For Image File Wrapper (IFW) processing, see the 
IFW Manual. Where foreign applications are listed on 
the 37 CFR 1.63 oath or declaration or application 
data sheet, the examiner should check that such foreign 
applications are properly listed on the PALM 
bib-data sheet, correcting errors of typography or 
format as necessary, and initialing the “verified” line 
when the information on the PALM bib-data 
sheet matches the oath or declaration or application 
data sheet. See MPEP § 202.03. Should there be an 
error on the oath or declaration, or application data 
sheet itself, the examiner should require a new oath or 
declaration, or application data sheet, where appropriate. 
If a foreign application listed on the oath or declaration, 
or application data sheet is not listed on the 
PALM bib-data sheet, the examiner should provide 
the information regarding the foreign application 
number, the country, and the filing date on the PALM 
bib-data sheet and forward the marked-up PALM bib-
data sheet to the Legal Instrument Examiner for correction 
in the Office computer systems. Applications 
listed on the PALM bib-data sheet but filed in 
countries not qualifying for benefits under 35 
U.S.C. 
119(a)-(d) should be lined through in  ink. A listing 
of countries qualifying for benefits under 35 U.S.C. 
119(a)-(d) appears at MPEP § 201.13.

===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.

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. 

===201.16 Using Certificate of Correction to Perfect Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f)===

'''35 U.S.C. 119. Benefit of Earlier Filing Date; Right of Priority.'''

(b)(1)No application for patent shall be entitled to this right 
of priority unless a claim is filed in the Patent and Trademark 
Office, identifying the foreign application by specifying the application 
number on that foreign application, the intellectual property 
authority or country in or for which the application was filed, and 
the date of filing the application, at such time during the pendency 
of the application as required by the Director.

(2)The Director may consider the failure of the applicant 
to file a timely claim for priority as a waiver of any such claim. 
The Director may establish procedures, including the payment of 
a surcharge, to accept an unintentionally delayed claim under this 
section.

(3)The Director may require a certified copy of the original 
foreign application, specification, and drawings upon which it 
is based, a translation if not in the English language, and such 
other information as the Director considers necessary. Any such 
certification shall be made by the foreign intellectual property 
authority in which the foreign application was filed and show the 
date of the application and of the filing of the specification and 
other papers.

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, 
400 F.2d 789, 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) or (f) 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) or (f) 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) or (f) 
had 
been satisfied in the parent application prior to 
issuance of the patent and the requirements of 37 CFR 
1.55(a) are met. Furthermore, if the continuing application 
(other than a design application), which issued 
as a patent, was filed on or after November 29, 2000 
, in addition to the filing of a certificate of correction 
request, patentee must also file a petition for an 
unintentionally delayed foreign priority claim under 
37 CFR 1.55(c).

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) or (f) 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.

 If the original application, which issued as the 
patent, was filed under 35 U.S.C. 111(a) (other than a 
design application) on or after November 29, 2000, a
claim for priority under 35 U.S.C. 119(a)-(d) or (f) for 
the benefit of a prior foreign application may be 
added (or corrected) in the issued patent by reissue 
or certificate of correction (assuming the conditions 
for reissue or certificate of correction are 
otherwise met). In addition to the filing of a reissue 
application or a request for a certificate of correction, 
a petition to accept a delayed claim for priority under 
35 U.S.C. 119(a)-(d) or (f) along with the surcharge as 
set forth in 37 CFR 1.17(t) and a statement that the 
entire delay between the date the claim was due under 
37 CFR1.55(a)(1) and the date the claim was filed 
was unintentional must be submitted. See 
37 CFR 1.55(c). 

===201.17 Incorporation by Reference Under 37 CFR 1.57(a)===

'''37 CFR 1.57. Incorporation by reference.'''

(a) Subject to the conditions and requirements of this paragraph, 
if all or a portion of the specification or drawing(s) is inadvertently 
omitted from an application, but the application contains 
a claim under § 1.55 for priority of a prior-filed foreign application, 
or a claim under § 1.78 for the benefit of a prior-filed provisional, 
nonprovisional, or international application, that was 
present on the filing date of the application, and the inadvertently 
omitted portion of the specification or drawing(s) is completely 
contained in the prior-filed application, the claim under § 1.55 or 
§ 1.78 shall also be considered an incorporation by reference of 
the prior-filed application as to the inadvertently omitted portion 
of the specification or drawing(s). 

(1) The application must be amended to include the inadvertently 
omitted portion of the specification or drawing(s) within 
any time period set by the Office, but in no case later than the 
close of prosecution as defined by § 1.114(b), or abandonment of 
the application, whichever occurs earlier. The applicant is also 
required to:

(i) Supply a copy of the prior-filed application, except 
where the prior-filed application is an application filed under35 
U.S.C. 111;

(ii) Supply an English language translation of any 
prior-filed application that is in a language other than English; and

(iii) Identify where the inadvertently omitted portion of 
the specification or drawings can be found in the prior-filed application.

(2) Any amendment to an international application pursuant 
to this paragraph shall be effective only as to the United States, 
and shall have no effect on the international filing date of the 
application. In addition, no request to add the inadvertently omitted 
portion of the specification or drawings in an international 
application designating the United States will be acted upon by 
the Office prior to the entry and commencement of the national 
stage (§ 1.491) or the filing of an application under 35 U.S.C. 111(a) which claims benefit of the international application. 

(3) If an application is not otherwise entitled to a filing 
date under § 1.53(b), the amendment must be by way of a petition 
pursuant to this paragraph accompanied by the fee set forth in 
§ 1.17(f). 

I.IN GENERAL

37 CFR 1.57(a) provides that, if all or a portion of 
the specification or drawing(s) is inadvertently omitted 
from an application, but the application contains a 
claim under 37 CFR 1.55 for priority of a prior-filed 
foreign application, or a claim under 37 CFR 1.78 for 
the benefit of a prior-filed provisional, nonprovisional, 
or international application, that was present 
on the filing date of the application, and the inadvertently 
omitted portion of the specification or drawing(
s) is completely contained in the prior-filed 
application, the claim for priority or benefit shall be 
considered an incorporation by reference of the prior-
filed application as to the inadvertently omitted portion 
of the specification or drawings.

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

For a discussion of explicit incorporation by reference 
statements, see MPEP § 608.01(p).

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

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

(A) the application must have been filed on or 
after September 21, 2004;

(B) all or a portion of the specification or drawing(
s) must have been inadvertently omitted from the 
application;

(C) a claim under 37 CFR 1.55 for priority of a 
prior-filed foreign application, or a claim under 
37 
CFR 1.78 for the benefit of a prior-filed provisional, 
nonprovisional, or international application, 
must have been present on the filing date of the application;

(D)the inadvertently omitted portion of the specification 
or drawing(s) must be completely contained 
in the prior-filed application;

(E)applicant must file an amendment to include 
the inadvertently omitted portion of the specification 
or drawing(s) within any time period set by the 
Office, but in no case later than the close of prosecution 
as defined by 37 CFR 1.114(b), or abandonment 
of the application, whichever occurs earlier;

(F)if the application is not otherwise entitled to a 
filing date, applicant must also file a petition under 
37 
CFR 1.57(a) accompanied by the petition fee set 
forth in 37 CFR 1.17(f);

(G)applicant must supply a copy of the prior-
filed application, except where the prior-filed application 
is an application filed under 35 U.S.C. 111;

(H)applicant must supply an English language 
translation of any prior-filed application that is in a 
language other than English; and

(I)applicant must identify where the inadvertently 
omitted portion of the specification or drawing(
s) can be found in the prior-filed application.

A.Application Filed On or After September 21, 
2004

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

B.Material Must Be Inadvertently Omitted

There is no requirement for applicant to submit a 
declaration stating that the omission was inadvertent 
or to submit proof that a particular omission was inadvertent 
at the time of filing of the application. If applicant 
submits an amendment to add the omitted 
material pursuant to 37 CFR 1.57(a), it would constitute 
a certification under 37 CFR 10.18(b) that the 
omission was inadvertent. The Office, however, may 
inquire as to inadvertence where the record raises 
such issue.

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

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

D.Omitted Material Completely Contained in 
Prior-filed Application

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

E.Amendment to Add Inadvertently Omitted 
Material

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

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

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

F.Petition Requirement

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

G.International Applications

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

III.EXAMPLES

Example 1:

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

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

Example 2:

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

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

Example 3:

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

If the benefit of the filing date of first application 
for the omitted subject matter is required (for 
example, the omitted material is required to provide 
support for the claimed subject matter of the 
third application and there is an intervening reference 
that has a prior art date prior to the filing date 
of the third application, but after the filing date of 
the first application), applicant must amend the 
specification of the second application and the 
specification of the third application to include the 
inadvertently omitted material in compliance with 
37 CFR 1.57(a) (note: the second and third applications 
must be filed on or after the effective date 
of 37 CFR 1.57(a)). Since the second application is 
abandoned, applicant must file a petition to revive 
under 37 CFR 1.137 in the second application only 
for the purpose of correcting the specification 
under 37 CFR 1.57(a) along with the amendment 
in compliance with 37 CFR 1.57(a).
<noinclude>{{MPEP Section||200|202}}</noinclude>