Editing MPEP 608

<noinclude>{{MPEP Section|607|600|609}}</noinclude>

==[[MPEP 608|608 Disclosure]]==

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

In return for a patent, the inventor gives as consideration 
a complete revelation or disclosure of the 
invention for which protection is sought. All amendments 
or claims must find descriptive basis in the 
original disclosure, or they involve new matter. Applicant 
may rely for disclosure upon the specification 
with original claims and drawings, as filed. See also 
37 CFR 1.121(f) and MPEP § 608.04.

If during the course of examination of a patent 
application, an examiner notes the use of language 
that could be deemed offensive to any race, religion, 
sex, ethnic group, or nationality, he or she should 
object to the use of the language as failing to comply 
with the Rules of Practice. 37 
CFR 1.3 proscribes the 
presentation of papers which are lacking in decorum 
and courtesy.

===608.01 Specification===

{{Statute|35 U.S.C. 22. Printing of papers filed.}}
The Director may require papers filed in the Patent and Trademark 
Office to be printed, typewritten, or on an electronic 
medium.
|}


{{Statute|37 CFR 1.71. Detailed description and specification of the invention.}}
(a)The specification must include a written description of 
the invention or discovery and of the manner and process of making 
and using the same, and is required to be in such full, clear, 
concise, and exact terms as to enable any person skilled in the art 
or science to which the invention or discovery appertains, or with 
which it is most nearly connected, to make and use the same.

(b)The specification must set forth the precise invention for 
which a patent is solicited, in such manner as to distinguish it 
from other inventions and from what is old. It must describe completely 
a specific embodiment of the process, machine, manufacture, 
composition of matter or improvement invented, and must 
explain the mode of operation or principle whenever applicable. 
The best mode contemplated by the inventor of carrying out his 
invention must be set forth.

(c)In the case of an improvement, the specification must 
particularly point out the part or parts of the process, machine, 
manufacture, or composition of matter to which the improvement 
relates, and the description should be confined to the specific 
improvement and to such parts as necessarily cooperate with it or 
as may be necessary to a complete understanding or description of 
it.

(d)A copyright or mask work notice may be placed in a 
design or utility patent application adjacent to copyright and mask 
work material contained therein. The notice may appear at any 
appropriate portion of the patent application disclosure. For 
notices in drawings, see § 1.84(s). The content of the notice must 
be limited to only those elements provided for by law. For example, 
“©1983 John Doe”(17 U.S.C. 401) and “M John Doe” (17 
U.S.C. 909) would be properly limited and, under current statutes, 
legally sufficient notices of copyright and mask work, respectively. 
Inclusion of a copyright or mask work notice will be permitted 
only if the authorization language set forth in paragraph (e) 
of this section is included at the beginning (preferably as the first 
paragraph) of the specification.

(e)The authorization shall read as follows:

A portion of the disclosure of this patent document contains 
material which is subject to (copyright or mask work) 
protection. The (copyright or mask work) owner has no 
objection to the facsimile reproduction by anyone of the 
patent document or the patent disclosure, as it appears in the 
Patent and Trademark Office patent file or records, but otherwise 
reserves all (copyright or mask work) rights whatsoever.

(f)The specification must commence on a separate sheet. 
Each sheet including part of the specification may not include 
other parts of the application or other information. The claim(s), 
abstract and sequence listing (if any) should not be included on a 
sheet including any other part of the application.

(g)
<p style="padding-left: +20px;">(1) The specification may disclose or be amended to disclose 
the names of the parties to a joint research agreement (35 
U.S.C. 103(c)(2)(C)).</p>

<p style="padding-left: +20px;">(2)An amendment under paragraph (g)(1) of this section 
must be accompanied by the processing fee set forth § 1.17(i) if 
not filed within one of the following time periods:</p>

<p style="padding-left: +40px;">(i)Within three months of the filing date of a national 
application;</p>

<p style="padding-left: +40px;">(ii)Within three months of the date of entry of the 
national stage as set forth in § 1.491 in an international application;</p>


<p style="padding-left: +40px;">(iii)Before the mailing of a first Office action on the 
merits; or</p>

<p style="padding-left: +40px;">(iv)Before the mailing of a first Office action after the 
filing of a request for continued examination under § 1.114.</p>

<p style="padding-left: +20px;">(3)If an amendment under paragraph (g)(1) of this section 
is filed after the date the issue fee is paid, the patent as issued 
may not necessarily include the names of the parties to the joint 
research agreement. If the patent as issued does not include the 
names of the parties to the joint research agreement, the patent 
must be corrected to include the names of the parties to the joint 
research agreement by a certificate of correction under 35 U.S.C. 
255 and § 1.323 for the amendment to be effective.</p>
|}


The specification is a written description of the 
invention and of the manner and process of making 
and using the same. The specification must be in such 
full, clear, concise, and exact terms as to enable any 
person skilled in the art or science to which the invention 
pertains to make and use the same. See 35 U.S.C. 
112 and 37 CFR 1.71. If a newly filed application 
obviously fails to disclose an invention with the clarity 
required by 35 U.S.C. 112, revision of the application 
should be required. See MPEP § 702.01. The 
written description must not include information that 
is not related to applicant’s invention, e.g., prospective 
disclaimers regarding comments made by examiners. 
If such information is included in the written 
description, the examiner will object to the specification 
and require applicant to take appropriate action, 
e.g., cancel the information. The specification must 
commence on a separate sheet. Each sheet including 
part of the specification may not include other parts of 
the application or other information. The claim(s), 
abstract and sequence listing (if any) should not be 
included on a sheet including any other part of the 
application (37 CFR 1.71(f)). That is, the claim(s), 
abstract and sequence listings (if any) should each 
begin on a new page since each of these sections 
(specification, abstract, claims, sequence listings) of 
the disclosure are separately indexed in the Image File 
Wrapper (IFW). There should be no overlap on a single 
page of more than one section of the disclosure.

The specification does not require a date.

Certain cross references to other related applications 
may be made. References to foreign applications 
or to applications identified only by the attorney’s 
docket number should be required to be canceled. 
U.S. applications identified only by the attorney’s 
docket number may be amended to properly identify 
the earlier application(s). See 37 CFR 1.78.

As the specification is never returned to applicant 
under any circumstances, the applicant should retain 
an accurate copy thereof. In amending the specification, 
the attorney or the applicant must comply with 
37 CFR 1.121 (see MPEP § 714).

Examiners should not object to the specification 
and/or claims in patent applications merely because 
applicants are using British English spellings (e.g., 
colour) rather than American English spellings. It is 
not necessary to replace the British English spellings 
with the equivalent American English spellings in the 
U.S. patent applications. Note that 37 CFR 
1.52(b)(1)(ii) only requires the application to be in the 
English language. There is no additional requirement 
that the English must be American English.

I.PAPER REQUIREMENTS

{{Statute|37 CFR 1.52. Language, paper, writing, margins, compact disc specifications.}}
(a)Papers that are to become a part of the permanent 
United States Patent and Trademark Office records in the file of a 
patent application or a reexamination proceeding. 

<p style="padding-left: +20px;">(1)All papers, other than drawings, that are submitted on 
paper or by facsimile transmission, and are to become a part of the 
permanent United States Patent and Trademark Office records in 
the file of a patent application or reexamination proceeding, must 
be on sheets of paper that are the same size, not permanently 
bound together, and:</p> 

<p style="padding-left: +40px;">(i)Flexible, strong, smooth, non-shiny, durable, and 
white;</p>

<p style="padding-left: +40px;">(ii)Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 
cm by 27.9 cm (8 1/2 by 11 inches), with each sheet including a 
top margin of at least 2.0 cm (3/4 inch), a left side margin of at 
least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 
inch), and a bottom margin of at least 2.0 cm (3/4 inch);</p>

<p style="padding-left: +40px;">(iii)Written on only one side in portrait orientation;</p>

<p style="padding-left: +40px;">(iv)Plainly and legibly written either by a typewriter 
or machine printer in permanent dark ink or its equivalent; and</p>

<p style="padding-left: +40px;">(v)Presented in a form having sufficient clarity and 
contrast between the paper and the writing thereon to permit the 
direct reproduction of readily legible copies in any number by use 
of photographic, electrostatic, photo-offset, and microfilming processes 
and electronic capture by use of digital imaging and optical 
character recognition.</p>

<p style="padding-left: +20px;">(2)All papers that are submitted on paper or by facsimile 
transmission and are to become a part of the permanent records of 
the United States Patent and Trademark Office should have no 
holes in the sheets as submitted.</p>

<p style="padding-left: +20px;">(3)The provisions of this paragraph and paragraph (b) of 
this section do not apply to the pre-printed information on paper 
forms provided by the Office, or to the copy of the patent submitted 
on paper in double column format as the specification in a 
reissue application or request for reexamination.</p>

<p style="padding-left: +20px;">(4)See § 1.58 for chemical and mathematical formulae 
and tables, and § 1.84 for drawings.</p>

<p style="padding-left: +20px;">(5)Papers that are submitted electronically to 
the Office 
must be formatted and transmitted in compliance with the Office’s 
electronic filing system requirements.</p>

(b)The application (specification, including the claims, 
drawings, and oath or declaration) or reexamination proceeding 
and any amendments or corrections to the application or reexamination 
proceeding.

<p style="padding-left: +20px;">(1)The application or proceeding and any amendments or 
corrections to the application (including any translation submitted 
pursuant to paragraph (d) of this section) or proceeding, except as 
provided for in § 1.69 and paragraph (d) of this section, must:</p>

<p style="padding-left: +40px;">(i)Comply with the requirements of paragraph (a) of 
this section; and</p>

<p style="padding-left: +40px;">(ii)Be in the English language or be accompanied by 
a translation of the application and a translation of any corrections 
or amendments into the English language together with a statement 
that the translation is accurate.</p>

<p style="padding-left: +20px;">(2)The specification (including the abstract and claims) 
for other than reissue applications and reexamination proceedings, 
and any amendments for applications (including reissue applications) 
and reexamination proceedings to the specification, except 
as provided for in §§ 1.821 through 1.825, must have:</p>

<p style="padding-left: +40px;">(i)Lines that are 1 1/2 or double spaced;</p>

<p style="padding-left: +40px;">(ii)Text written in a nonscript type font (e.g., Arial, 
Times Roman, or Courier, preferably a font size of 12) lettering 
style having capital letters which should be at least 0.3175 cm. 
(0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) 
high (e.g., a font size of 6); and</p> 

<p style="padding-left: +40px;">(iii)Only a single column of text.</p>

<p style="padding-left: +20px;">(3)The claim or claims must commence on a separate 
physical sheet or electronic page (§ 1.75(h)).</p>

<p style="padding-left: +20px;">(4)The abstract must commence on a separate physical 
sheet or electronic page or be submitted as the first page of the 
patent in a reissue application or reexamination proceeding (§ 1.72(b)).</p> 

<p style="padding-left: +20px;">(5)Other than in a reissue application or reexamination 
proceeding, the pages of the specification including claims and 
abstract must be numbered consecutively, starting with 1, the 
numbers being centrally located above or preferably below, the text.</p>

<p style="padding-left: +20px;">(6)Other than in a reissue application or reexamination 
proceeding, the paragraphs of the specification, other than in the 
claims or abstract, may be numbered at the time the application is 
filed, and should be individually and consecutively numbered 
using Arabic numerals, so as to unambiguously identify each 
paragraph. The number should consist of at least four numerals 
enclosed in square brackets, including leading zeros (e.g., [0001]). 
The numbers and enclosing brackets should appear to the right of 
the left margin as the first item in each paragraph, before the first 
word of the paragraph, and should be highlighted in bold. A gap, 
equivalent to approximately four spaces, should follow the number. 
Nontext elements (e.g., tables, mathematical or chemical formulae, 
chemical structures, and sequence data) are considered 
part of the numbered paragraph around or above the elements, and 
should not be independently numbered. If a nontext element 
extends to the left margin, it should not be numbered as a separate 
and independent paragraph. A list is also treated as part of the 
paragraph around or above the list, and should not be independently 
numbered. Paragraph or section headers (titles), whether 
abutting the left margin or centered on the page, are not considered 
paragraphs and should not be numbered.</p> 

(c)

<p style="padding-left: +20px;">(1) Any interlineation, erasure, cancellation or other alteration 
of the application papers filed must be made before the signing 
of any accompanying oath or declaration pursuant to § 1.63referring to those application papers and should be dated and initialed 
or signed by the applicant on the same sheet of paper. 
Application papers containing alterations made after the signing 
of an oath or declaration referring to those application papers must 
be supported by a supplemental oath or declaration under § 1.67. 
In either situation, a substitute specification (§ 1.125) is required 
if the application papers do not comply with paragraphs (a) and 
(b) of this section.</p>

<p style="padding-left: +20px;">(2)After the signing of the oath or declaration referring 
to the application papers, amendments may only be made in the 
manner provided by § 1.121.</p>

<p style="padding-left: +20px;">(3)Notwithstanding the provisions of this paragraph, if 
an oath or declaration is a copy of the oath or declaration from a 
prior application, the application for which such copy is submitted 
may contain alterations that do not introduce matter that would 
have been new matter in the prior application.</p>

(d)A nonprovisional or provisional application may be in a 
language other than English.

<p style="padding-left: +20px;">(1)Nonprovisional application. If a nonprovisional application 
is filed in a language other than English, an English language 
translation of the non-English language application, a 
statement that the translation is accurate, and the processing fee 
set forth in § 1.17(i) are required. If these items are not filed with 
the application, applicant will be notified and given a period of 
time within which they must be filed in order to avoid abandonment.</p>

<p style="padding-left: +20px;">(2)Provisional application. If a provisional application is 
filed in a language other than English, an English language translation 
of the non-English language provisional application will not 
be required in the provisional application. See § 1.78(a) for the 
requirements for claiming the benefit of such provisional application 
in a nonprovisional application.</p>

(e)Electronic documents that are to become part of the permanent 
United States Patent and Trademark Office records in the 
file of a patent application or reexamination proceeding.

<p style="padding-left: +20px;">(1)The following documents may be submitted to the 
Office on a compact disc in compliance with this paragraph:</p>

<p style="padding-left: +40px;">(i)A computer program listing (see § 1.96);</p>

<p style="padding-left: +40px;">(ii)A “Sequence Listing” (submitted under § 
1.821(c)); or</p>

<p style="padding-left: +40px;">(iii)Any individual table (see § 1.58) if the table is 
more than 50 pages in length, or if the total number of pages of all 
of the tables in an application exceeds 100 pages in length, where 
a table page is a page printed on paper in conformance with paragraph 
(b) of this section and § 1.58(c).</p>

<p style="padding-left: +20px;">(2)A compact disc as used in this part means a Compact 
Disc-Read Only Memory (CD-ROM) or a Compact Disc-Recordable 
(CD-R) in compliance with this paragraph. A CD-ROM is a 
“read-only” medium on which the data is pressed into the disc so 
that it cannot be changed or erased. A CD-R is a “write once” 
medium on which once the data is recorded, it is permanent and 
cannot be changed or erased.</p>

<p style="padding-left: +20px;">(3)</p>

<p style="padding-left: +40px;">(i) Each compact disc must conform to the International 
Standards Organization (ISO) 9660 standard, and the contents 
of each compact disc must be in compliance with the 
American Standard Code for Information Interchange (ASCII). 
CD-R discs must be finalized so that they are closed to further 
writing to the CD-R.</p>

<p style="padding-left: +40px;">(ii)Each compact disc must be enclosed in a hard 
compact disc case within an unsealed padded and protective mailing 
envelope and accompanied by a transmittal letter on paper in 
accordance with paragraph (a) of this section. The transmittal letter 
must list for each compact disc the machine format (e.g., IBM-
PC, Macintosh), the operating system compatibility (e.g., MS-
DOS, MS-Windows, Macintosh, Unix), a list of files contained on 
the compact disc including their names, sizes in bytes, and dates 
of creation, plus any other special information that is necessary to 
identify, maintain, and interpret (e.g., tables in landscape orientation 
should be identified as landscape orientation or be identified 
when inquired about) the information on the compact disc. Compact 
discs submitted to the Office will not be returned to the applicant.</p>

<p style="padding-left: +20px;">(4)Any compact disc must be submitted in 
duplicate 
unless it contains only the “Sequence Listing” in computer readable 
form required by § 1.821(e). The compact disc and duplicate 
copy must be labeled “Copy 1” and “Copy 2,” respectively. The 
transmittal letter which accompanies the compact disc must 
include a statement that the two compact discs are identical. In the 
event that the two compact discs are not identical, the Office will 
use the compact disc labeled “Copy 1” for further processing. Any 
amendment to the information on a compact disc must be by way 
of a replacement compact disc in compliance with this paragraph 
containing the substitute information, and must be accompanied 
by a statement that the replacement compact disc contains no new 
matter. The compact disc and copy must be labeled “COPY 1 
REPLACEMENT MM/DD/YYYY” (with the month, day and 
year of creation indicated), and “COPY 2 REPLACEMENT MM/
DD/YYYY,” respectively.</p>

<p style="padding-left: +20px;">(5)The specification must contain an incorporation-by-
reference of the material on the compact disc in a separate paragraph 
(§ 1.77(b)(5)), identifying each compact disc by the names 
of the files contained on each of the compact discs, their date of 
creation and their sizes in bytes. The Office may require applicant 
to amend the specification to include in the paper portion any part 
of the specification previously submitted on compact disc.</p>

<p style="padding-left: +20px;">(6)A compact disc must also be labeled with the following 
information:</p>

<p style="padding-left: +40px;">(i)The name of each inventor (if known);</p>

<p style="padding-left: +40px;">(ii)Title of the invention;</p>

<p style="padding-left: +40px;">(iii)The docket number, or application number if 
known, used by the person filing the application to identify the 
application; and</p>

<p style="padding-left: +40px;">(iv)A creation date of the compact disc.</p>

<p style="padding-left: +40px;">(v)If multiple compact discs are submitted, the label 
shall indicate their order (e.g. “1 of X”).</p>

<p style="padding-left: +40px;">(vi)An indication that the disk is “Copy 1” or “Copy 
2” of the submission. See paragraph (b)(4) of this section.</p>

<p style="padding-left: +20px;">(7)If a file is unreadable on both copies of the disc, the 
unreadable file will be treated as not having been submitted. A file 
is unreadable if, for example, it is of a format that does not comply 
with the requirements of paragraph (e)(3) of this section, it is corrupted 
by a computer virus, or it is written onto a defective compact 
disc.</p>

(f)

<p style="padding-left: +20px;">(1) Any sequence listing in an electronic medium in compliance 
with §§ 1.52(e) and 1.821(c) or (e), and any computer program 
listing filed in an electronic medium in compliance with §§ 
1.52(e) and 1.96, will be excluded when determining the application 
size fee required by § 1.16(s) or § 1.492(j). For purposes of 
determining the application size fee required by § 1.16(s) or §
1.492(j), for an application the specification and drawings of 
which, excluding any sequence listing in compliance with §
1.821(c) or (e), and any computer program listing filed in an electronic 
medium in compliance with §§ 1.52(e) and 1.96, are submitted 
in whole or in part on an electronic medium other than the 
Office electronic filing system, each three kilobytes of content 
submitted on an electronic medium shall be counted as a sheet of 
paper.</p>

<p style="padding-left: +20px;">(2)Except as otherwise provided in this paragraph, the 
paper size equivalent of the specification and drawings of an 
application submitted via the Office electronic filing system will 
be considered to be seventy-five percent of the number of sheets 
of paper present in the specification and drawings of the application 
when entered into the Office file wrapper after being rendered 
by the Office electronic filing system for purposes of determining 
the application size fee required by § 1.16(s). Any sequence listing 
in compliance with § 1.821(c) or (e), and any computer program 
listing in compliance with § 1.96, submitted via the Office 
electronic filing system will be excluded when determining the 
application size fee required by § 1.16(s) if the listing is submitted 
in ASCII text as part of an associated file.</p>
|}


{{Statute|37 CFR 1.58. Chemical and mathematical formulae and tables.}}
(a)The specification, including the claims, may contain 
chemical and mathematical formulae, but shall not contain drawings 
or flow diagrams. The description portion of the specification 
may contain tables, but the same tables may only be included in 
both the drawings and description portion of the specification if 
the application was filed under 35 U.S.C. 371. Claims may contain 
tables either if necessary to conform to 35 U.S.C. 112 or if 
otherwise found to be desirable.

(b)Tables that are submitted in electronic form (§§ 1.96(c) 
and 1.821(c)) must maintain the spatial relationships (e.g., alignment 
of columns and rows) of the table elements when displayed 
so as to visually preserve the relational information they convey. 
Chemical and mathematical formulae must be encoded to maintain 
the proper positioning of their characters when displayed in 
order to preserve their intended meaning.

(c)Chemical and mathematical formulae and tables must be 
presented in compliance with § 1.52(a) and (b), except that chemical 
and mathematical formulae or tables may be placed in a landscape 
orientation if they cannot be presented satisfactorily in a 
portrait orientation. Typewritten characters used in such formulae 
and tables must be chosen from a block (nonscript) type font or 
lettering style having capital letters which should be at least 0.422 
cm. (0.166 inch) high (e.g., preferably Arial, Times Roman, or 
Courier with a font size of 12), but may be no smaller than 0.21 
cm. (0.08 inch) high (e.g., a font size of 6). A space at least 0.64 
cm. (1/4 inch) high should be provided between complex formulae 
and tables and the text. Tables should have the lines and columns 
of data closely spaced to conserve space, consistent with a 
high degree of legibility.
|}


The pages of the specification including claims and 
abstract must be numbered consecutively, starting 
with 1, the numbers being centrally located above or 
preferably, below, the text. The lines of the specification, 
and any amendments to the specification, must 
be 1 1/2 or double spaced. The text must be written in 
a nonscript type font (e.g., Arial, Times Roman, or 
Courier, preferably a font size of 12) lettering style 
having capital letters which should be at least 0.3175 
cm. (0.125 inch) high, but may be no smaller than 
0.21 cm. (0.08 inch) high (e.g., a font size of 6) (37 
CFR 1.52(b)(2)(ii)). The text may not be written 
solely in capital letters.

All application papers (specification, including 
claims, abstract, any drawings, oath or declaration, 
and other papers), and also papers subsequently filed, 
must have each page plainly written on only one side 
of a sheet of paper. The specification must commence 
on a separate sheet. Each sheet including part of the 
specification may not include other parts of the application 
or other information. The claim(s), abstract and 
sequence listing (if any) should not be included on a 
sheet including any other part of the application (37 
CFR 1.71(f)). The claim or claims must commence on 
a separate sheet or electronic page and any sheet 
including a claim or portion of a claim may not contain 
any other parts of the application or other material 
(37 CFR 1.75(h)). The abstract must commence 
on a separate sheet and any sheet including an abstract 
or portion of an abstract may not contain any other 
parts of the application or other material (37 CFR 
1.72(b)). 

All application papers that are submitted on paper 
or by facsimile transmission which are to become a 
part of the permanent record of the U.S. Patent and 
Trademark Office must be on sheets of paper which 
are the same size (for example, an amendment should 
not have two different sizes of paper, but the specification 
can have one size of paper and the drawings a 
different size) and are either 21.0 cm. by 29.7 cm. 
(DIN size A4) or 21.6 cm. by 27.9 cm. (8 1/2 by 11 
inches). See 37 CFR 1.52(a)(1) and 37 CFR 1.84(f). 
Application papers submitted by the Office Electronic 
Filing System (EFS) must conform with the user 
instructions for EFS. Each sheet, other than the drawings, 
must include a top margin of at least 2.0 cm. (3/4 
inch), a left side margin of at least 2.5 cm. (1 inch), a 
right side margin of at least 2.0 cm. (3/4 inch), and a 
bottom margin of at least 2.0 cm. (3/4 inch). No holes 
should be made in the sheets as submitted. 

Applicants must make every effort to file patent 
applications in a form that is clear and reproducible. If 
the papers are not of the required quality, substitute 
typewritten or mechanically printed papers of suitable 
quality will be required. See 37 CFR 1.125 for filing 
substitute typewritten or mechanically printed papers 
constituting a substitute specification required by the 
Office. See also MPEP § 608.01(q). All papers which 
are to become a part of the permanent records of the 
U.S. Patent and Trademark Office must be legibly 
written either by a typewriter or mechanical printer in 
permanent dark ink or its equivalent in portrait orientation 
on flexible, strong, smooth, nonshiny, durable, 
and white paper. Typed, mimeographed, xeroprinted, 
multigraphed or nonsmearing carbon copy forms of 
reproduction are acceptable.

Where an application is filed with papers that 
do not comply with 37 CFR 1.52, the Office of 
Initial Patent Examination will mail a “Notice to File 
Corrected Application Papers” indicating the deficiency 
and setting a time period within which the 
applicant must correct the deficiencies to avoid abandonment. 
The failure to submit application papers in 
compliance with 37 CFR 1.52 does not effect the 
grant of a filing date, and original application papers 
that do not comply with 37 
CFR 1.52 will be retained 
in the application file as the original disclosure of the 
invention. The USPTO will not return papers simply 
because they do not comply with 37 
CFR 1.52.

Legibility includes ability to be photocopied and 
photomicrographed so that suitable reprints can be 
made and ability to be electronically reproduced by 
use of digital imaging and optical character recognition. 
This requires a high contrast, with black lines 
and a white background. Gray lines and/or a gray 
background sharply reduce photo reproduction quality. 
Legibility of some application papers may become 
impaired due to abrasion or aging of the printed material 
during examination and ordinary handling of the 
file. It may be necessary to require that legible and 
permanent copies be furnished at later stages after filing, 
particularly when preparing for issue.

Some of the patent application papers received by 
the U.S. Patent and Trademark Office are copies of 
the original, ribbon copy. These are acceptable if, in 
the opinion of the Office, they are legible and permanent.

The paper used must have a surface such that 
amendments may be written thereon in ink. So-called 
“Easily Erasable” paper having a special coating so 
that erasures can be made more easily may not provide 
a “permanent” copy, 37 CFR 1.52(a)(1)(iv). If a 
light pressure of an ordinary (pencil) eraser removes 
the imprint, the examiner should, as soon as this 
becomes evident, notify applicant by use of Form 
paragraph 6.32 that it will be necessary for applicant 
to order a copy of the specification and claims to be 
made by the U.S. Patent and Trademark Office at the 
applicant’s expense for incorporation in the file. It is 
not necessary to return this copy to applicant for signature. 
Since application papers are now maintained 
in an Image File Wrapper, the type of paper is 
unlikely to be an issue so long as the Office was able 
to scan and reproduce the papers that were filed.

II.ALTERATION OF APPLICATION 
PAPERS

37 CFR 1.52(c) relating to interlineations and other 
alterations is strictly enforced. See In re Swanberg, 
129 USPQ 364 (Comm’r Pat. 1960). See also MPEP 
§ 605.04(a).

III.CERTIFIED COPIES OF AN APPLICATION-
AS-FILED

If an application-as-filed does not meet the sheet 
size/margin and quality requirements of 37 CFR 1.52and 1.84(f) and (g), certified copies of such application 
may be illegible and/or ineffective as priority 
documents. When an applicant requests that the 
USPTO provide a certified copy of an application-as-
filed and pays the fee set forth in 37 CFR 1.19(b)(1), 
the USPTO will make a copy of the application-as-
filed from the records in the IFW database (or the 
microfilm database). If papers submitted in the application-
as-filed are not legible, certified copies of the 
application as originally filed will not be legible.

The USPTO performs exception processing when 
scanning application papers that do not comply with 
the sheet size/margin and quality requirements. If 
papers submitted in the application-as-filed (including 
any transmittal letter or cover sheet) do not meet the 
sheet size requirement of 37 
CFR 1.52 and 1.84(f) 
(e.g., the papers are legal size (8 1/2 by 14 inches)), 
the USPTO must reduce such papers to be able to 
image-scan the entire application and record it in the 
IFW database. In addition, if papers submitted in the 
application-as-filed do not meet the quality requirements 
of 37 
CFR 1.52 (e.g., the papers are shiny or 
non-white), the USPTO will attempt to enhance such 
papers before scanning to make the resulting electronic 
record in the IFW database more readable. 
However, if exception processing is required to make 
the IFW copy, certified copies of the application as 
originally filed may not be legible.

If application papers are filed that do not meet sheet 
size/margin and quality requirements, the USPTO will 
require the applicant to file substitute papers that do 
comply with the requirements of 37 
CFR 1.52 and 
1.84(e), (f) and (g). The substitute papers submitted in 
reply to the above-mentioned requirement will provide 
the USPTO with an image- and OCR-scannable 
copy of the application for printing the application as 
a patent publication or patent. However, the USPTO 
will not treat application papers submitted after the 
filing date of an application as the original disclosure 
of the application for making a certified copy of the 
application-as-filed or any other purpose. That is, 
even if an applicant subsequently files substitute 
application papers that comply with 37 
CFR 1.52 and 
then requests that the USPTO provide a certified copy 
of an application-as-filed, paying the fee set forth in 
37 
CFR 1.19(b)(1), the USPTO will still make a copy 
of the application-as-filed rather than a copy of the 
subsequently filed substitute papers.

IV.USE OF METRIC SYSTEM OF MEASUREMENTS 
IN PATENT APPLICATIONS

In order to minimize the necessity in the future for 
converting dimensions given in the English system of 
measurements to the metric system of measurements 
when using printed patents as research and prior art 
search documents, all patent applicants should use the 
metric (S.I.) units followed by the equivalent English 
units when describing their inventions in the specifications 
of patent applications. 

The initials S.I. stand for “Le Système International 
d’ Unités,” the French name for the International System 
of Units, a modernized metric system adopted in 
1960 by the International General Conference of 
Weights and Measures based on precise unit measurements 
made possible by modern technology.

V.FILING OF NON-ENGLISH LANGUAGE 
APPLICATIONS

{{Statute|37 CFR 1.52. Language, Paper, Writing, Margins, Compact Disc Specifications.}}
{{Ellipsis}}
(d)A nonprovisional or provisional application may be in a 
language other than English.

<p style="padding-left: +20px;">(1)Nonprovisional application. If a nonprovisional application 
is filed in a language other than English, an English language 
translation of the non-English language application, a 
statement that the translation is accurate, and the processing fee 
set forth in § 1.17(i) are required. If these items are not filed with 
the application, applicant will be notified and given a period of 
time within which they must be filed in order to avoid abandonment.</p>

<p style="padding-left: +20px;">(2)Provisional application. If a provisional application is 
filed in a language other than English, an English language translation 
of the non-English language provisional application will not 
be required in the provisional application. See § 1.78(a) for the 
requirements for claiming the benefit of such provisional application 
in a nonprovisional application.</p>
{{Ellipsis}}
|}


The U.S. Patent and Trademark Office will accord a 
filing date to an application meeting the requirements 
of 35 
U.S.C. 111(a), or a provisional application in 
accordance with 35 U.S.C. 111(b), even though some 
or all of the application papers, including the written 
description and the claims, is in a language other than 
English and hence does not comply with 37 CFR 
1.52.

If a nonprovisional application is filed in a language 
other than English, an English translation of 
the non-English language papers, a statement that the 
translation is accurate, the fees set forth in 37 CFR 
1.16, the oath or declaration  and fee set forth in 37 
CFR 1.17(i) should either accompany the nonprovisional 
application papers or be filed in the Office 
within the time set by the Office. If a provisional 
application is filed in a language other than English, 
an English translation of the non-English language 
provisional application and a statement that the translation 
is accurate must be submitted if benefit of the 
provisional application is claimed in a later-filed nonprovisional 
application (see 37 CFR 1.78(a)(5)). If 
the 
translation and statement were not previously filed 
in the provisional application, applicant will be notified 
in the nonprovisional application that claims the 
benefit of the provisional application and be given a 
period of time within which to file the translation and 
statement in the provisional application. Applicants 
may file the translation and statement in the provisional 
application even if the provisional application 
has become abandoned. A timely reply to such 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. Failure to take 
one of the above actions will result in the abandonment 
of the nonprovisional application.

A subsequently filed English translation must contain 
the complete identifying data for the application 
in order to permit prompt association with the papers 
initially filed. Accordingly, it is strongly recommended 
that the original application papers be accompanied 
by a cover letter and a self-addressed return 
postcard, each containing the following identifying 
data in English: (a) applicant’s name(s); (b) title of 
invention; (c) number of pages of specification, 
claims, and sheets of drawings; (d) whether an oath or 
declaration was filed and (e) amount and manner of 
paying the fees set forth in 37 CFR 1.16.

The translation must be a literal translation and 
must be accompanied by a statement that the translation 
is accurate. The translation must also be accompanied 
by a signed request from the applicant, his or 
her attorney or agent, asking that the English translation 
be used as the copy for examination purposes in 
the Office. If the English translation does not conform 
to idiomatic English and United States practice, it 
should be accompanied by a preliminary amendment 
making the necessary changes without the introduction 
of new matter prohibited by 35 U.S.C. 132. If 
such an application is published as a patent application 
publication, the document that is published is the 
translation. See 37 CFR 1.215(a) and MPEP § 1121regarding the content of the application publication. 
In the event that the English translation and the statement 
are not timely filed in the nonprovisional application, 
the nonprovisional application will be 
regarded as abandoned.

It should be recognized that this practice is intended 
for emergency situations to prevent loss of valuable 
rights and should not be routinely used for filing 
applications. There are at least two reasons why this 
should not be used on a routine basis. First, there are 
obvious dangers to applicant and the public if he or 
she fails to obtain a correct literal 
translation. Second, 
the filing of a large number of applications under the 
procedure will create significant administrative burdens 
on the Office.

VI.ILLUSTRATIONS IN THE SPECIFICATION

Graphical illustrations, diagrammatic views, flowcharts, 
and diagrams in the descriptive portion of the 
specification do not come within the purview of 
37 
CFR 1.58(a), which permits tables, chemical and 
mathematical formulas in the specification in lieu of 
formal drawings. The examiner should object to such 
descriptive illustrations in the specification and 
request drawings in accordance with 37 CFR 1.81when an application contains graphs, drawings, or 
flow charts in the specification.

The specification, including any claims, may contain 
chemical formulas and mathematical equations, 
but must not contain drawings or flow diagrams. The 
description portion of the specification may contain 
tables, but the same tables must not be included in 
both the drawings as a figure and in the description 
portion of the specification. Applications filed under 
35 U.S.C. 371 are excluded from the prohibition from 
having the same tables in both the description portion 
of the specification and drawings. Claims may contain 
tables either if necessary to conform to 35 U.S.C. 112 
or if otherwise found to be desirable. See MPEP § 
2173.05(s). When such a patent is printed, however, 
the table will not be included as part of the claim, and 
instead the claim will contain a reference to the table 
number.

See MPEP § 601.01(d) for treatment of applications 
filed without all pages of the specification.

VII.HYPERLINKS AND OTHER FORMS OF 
BROWSER-EXECUTABLE CODE IN THE 
SPECIFICATION 

Examiners must review patent applications to 
make certain that hyperlinks and other forms of 
browser-executable code, especially commercial site 
URLs, are not included in a patent application. 37 
CFR 1.57(d) states that an incorporation by reference 
by hyperlink or other form of browser executable 
code is not permitted. Examples of a hyperlink or a 
browser-executable code are a URL placed between 
these symbols “ ” and http:// followed by a URL 
address. When a patent application with embedded 
hyperlinks and/or other forms of browser-executable 
code issues as a patent (or is published as a patent 
application publication) and the patent document is 
placed on the USPTO web page, when the patent document 
is retrieved and viewed via a web browser, the 
URL is interpreted as a valid HTML code and it 
becomes a live web link. When a user clicks on the 
link with a mouse, the user will be transferred to 
another web page identified by the URL, if it exists, 
which could be a commercial web site. USPTO policy 
does not permit the USPTO to link to any commercial 
sites since the USPTO exercises no control over the 
organization, views or accuracy of the information 
contained on these outside sites. 

If hyperlinks and/or other forms of browser-executable 
code are embedded in the text of the patent application, 
examiners should object to the specification 
and indicate to applicants that the embedded hyperlinks 
and/or other forms of browser-executable code 
are impermissible and require deletion. This requirement 
does not apply to electronic documents listed on 
forms PTO-892 and PTO/SB/08 where the electronic 
document is identified by reference to a URL. 

The attempt to incorporate subject matter into the 
patent application by reference to a hyperlink and/or 
other forms of browser-executable code is considered 
to be an improper incorporation by reference. See 37 
CFR 1.57(d) and MPEP § 608.01(p), paragraph I 
regarding incorporation by reference. Where the 
hyperlinks and/or other forms of browser-executable 
codes themselves rather than the contents of the site to 
which the hyperlinks are directed are part of applicant’s 
invention and it is necessary to have them 
included in the patent application in order to comply 
with the requirements of 35 U.S.C. 112, first paragraph, 
and applicant does not intend to have these 
hyperlinks be active links, examiners should not 
object to these hyperlinks. The Office will disable 
these hyperlinks when preparing the text to be loaded 
onto the USPTO web database.

Note that nucleotide and/or amino acid sequence 
data placed between the symbols “ ” are not considered 
to be hyperlinks and/or browser-executable 
code and therefore should not be objected to as being 
an improper incorporation by reference (see 37 CFR 
1.821 – 1.825). 

====608.01(a) Arrangement of Application====

37 CFR 1.77. Arrangement of application elements.

(a)The elements of the application, if applicable, should 
appear in the following order:

(1)Utility application transmittal form.

(2)Fee transmittal form.

(3)Application data sheet (see § 1.76).

(4)Specification.

(5)Drawings.

(6)Executed oath or declaration.

(b)The specification should include the following sections 
in order:

(1)Title of the invention, which may be accompanied 
by an introductory portion stating the name, citizenship, and residence 
of the applicant (unless included in the application data 
sheet).

(2)Cross-reference to related applications (unless 
included in the application data sheet).

(3)Statement regarding federally sponsored research 
or development.

(4)The names of the parties to a joint research agreement.


(5)Reference to a “Sequence Listing,” a table, or a computer 
program listing appendix submitted on a compact disc and 






an incorporation-by-reference of the material on the compact disc 
(see § 1.52(e)(5)). The total number of compact discs including 
duplicates and the files on each compact disc shall be specified.

(6)Background of the invention.

(7)Brief summary of the invention.

(8)Brief description of the several views of the drawing.


(9)Detailed description of the invention.

(10)A claim or claims.

(11)Abstract of the disclosure.

(12)“Sequence Listing,” if on paper (see §§ 
 
1.821through 1.825).

(c)The text of the specification sections defined in paragraphs 
(b)(1) through (b)(12) of this section, if applicable, should 
be preceded by a section heading in uppercase and without underlining 
or bold type.

For design patent specification, see MPEP § 
1503.01.

For plant patent specification, see MPEP § 1605.

For reissue patent specification, see MPEP § 1411.

The following order of arrangement of specification 
elements is preferable in framing the nonprovisional 
specification and each of the lettered items 
should appear in upper case, without underlining or 
bold type, as section headings. If no text follows the 
section heading, the phrase “Not Applicable” should 
follow the section heading. It is recommended that 
provisional applications follow the same general format, 
although claims are not required. If an application 
data sheet (37 CFR 1.76) is used, data supplied in 
the application data sheet need not be provided elsewhere 
in the application except that the citizenship of 
each inventor must be provided in the oath or declaration 
under 37 CFR 1.63 even if this information is 
provided in the application data sheet. If there is a discrepancy 
between the information submitted in an 
application data sheet and the information submitted 
elsewhere in the application, the application data 
sheet will control except for the naming of the inventors 
and the citizenship of the inventors. See 37 CFR 
1.76(d) and MPEP § 601.05.

(A)Title of the Invention.

(B)Cross-References to Related Applications.

(C)Statement Regarding Federally Sponsored 
Research or Development.

(D)The names of the parties to a joint research 
agreement.

(E)Reference to a “Sequence Listing,” a table, or 
a computer program listing appendix submitted on a 
compact disc and an incorporation-by-reference of the 
material on the compact disc (See 37 
CFR 1.52(e)(5)). 
The total number of compact discs including duplicates 
and the files on each compact disc must be specified.


(F)Background of the Invention.

(1)Field of the Invention.

(2)Description of the related art including 
information disclosed under 37 CFR 1.97 and 1.98. 

(G)Brief Summary of the Invention.

(H)Brief Description of the Several Views of the 
Drawings.

(I)Detailed Description of the Invention.

(J)Claim or Claims.

(K)Abstract of the Disclosure.

(L)“Sequence Listing,” if on paper (See 37 
CFR 
1.821-1.825).

Applicant (typically a pro se) may be advised of the 
proper arrangement by using Form Paragraph 6.01 or 
6.02.



¶ 6.01 Arrangement of the Sections of the Specification in 
a Utility Application

The following guidelines illustrate the preferred layout for the 
specification of a utility application. These guidelines are suggested 
for the applicant’s use.

Arrangement of the Specification

As provided in 37 CFR 1.77(b), the specification of a utility 
application should include the following sections in order. Each 
of the lettered items should appear in upper case, without underlining 
or bold type, as a section heading. If no text follows the section 
heading, the phrase “Not Applicable” should follow the 
section heading:

(a) TITLE OF THE INVENTION.

(b) CROSS-REFERENCE TO RELATED APPLICATIONS.

(c) STATEMENT REGARDING FEDERALLY SPONSORED 
RESEARCH OR DEVELOPMENT.

(d) THE NAMES OF THE PARTIES TO A JOINT 
RESEARCH AGREEMENT.

(e) INCORPORATION-BY-REFERENCE OF MATERIAL 
SUBMITTED ON A COMPACT DISC. 

(f) BACKGROUND OF THE INVENTION.






(1) Field of the Invention.

(2) Description of Related Art including information disclosed 
under 37 CFR 1.97 and 1.98.

(g) BRIEF SUMMARY OF THE INVENTION.

(h) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF 
THE DRAWING(S).

(i) DETAILED DESCRIPTION OF THE INVENTION.

(j) CLAIM OR CLAIMS (commencing on a separate sheet).

(k) ABSTRACT OF THE DISCLOSURE (commencing on a 
separate sheet).

(l) SEQUENCE LISTING. (See MPEP § 2424 and 37 CFR 
1.821-1.825. A “Sequence Listing” is required on paper if the 
application discloses a nucleotide or amino acid sequence as 
defined in 37 CFR 1.821(a) and if the required “Sequence Listing” 
is not submitted as an electronic document on compact disc.)

Examiner Note:

For the arrangement of the sections of the specification in a 
design application, see 37 CFR 1.154(b). Form paragraph 15.05may be used for a design application. For the arrangement of the 
sections of the specification in a plant application, see 37 CFR 
1.163(c). For the requirements of the specification in a reissue 
application, see 37 CFR 1.173(a)(1). 





¶ 6.02 Content of Specification

Content of Specification

(a) TITLE OF THE INVENTION: See 37 CFR 1.72(a) and 
MPEP § 606. The title of the invention should be placed at the top 
of the first page of the specification unless the title is provided in 
an application data sheet. The title of the invention should be brief 
but technically accurate and descriptive, preferably from two to 
seven words. It may not contain more than 500 characters. 

(b) CROSS-REFERENCES TO RELATED APPLICATIONS: 
See 37 CFR 1.78 and MPEP § 201.11.

(c) STATEMENT REGARDING FEDERALLY SPONSORED 
RESEARCH OR DEVELOPMENT: See MPEP § 310.

(d) THE NAMES OF THE PARTIES TO A JOINT 
RESEARCH AGREEMENT. See 37 CFR 1.71(g).

(e) INCORPORATION-BY-REFERENCE OF MATERIAL 
SUBMITTED ON A COMPACT DISC: The specification is 
required to include an incorporation-by-reference of electronic 
documents that are to become part of the permanent United States 
Patent and Trademark Office records in the file of a patent application. 
See 37 CFR 1.52(e) and MPEP § 608.05. Computer program 
listings (37 CFR 1.96(c)), “Sequence Listings” (37 CFR 
1.821(c)), and tables having more than 50 pages of text were permitted 
as electronic documents on compact discs beginning on 
September 8, 2000. 

(f) BACKGROUND OF THE INVENTION: See MPEP § 
608.01(c). The specification should set forth the Background of 
the Invention in two parts:

(1) Field of the Invention: A statement of the field of art to 
which the invention pertains. This statement may include a paraphrasing 
of the applicable U.S. patent classification definitions of 
the subject matter of the claimed invention. This item may also be 
titled “Technical Field.”

(2) Description of the Related Art including information disclosed 
under 37 CFR 1.97 and 37 CFR 1.98: A description of the 
related art known to the applicant and including, if applicable, references 
to specific related art and problems involved in the prior 
art which are solved by the applicant’s invention. This item may 
also be titled “Background Art.”

(g) BRIEF SUMMARY OF THE INVENTION: See MPEP § 
608.01(d). A brief summary or general statement of the invention 
as set forth in 37 CFR 1.73. The summary is separate and distinct 
from the abstract and is directed toward the invention rather than 
the disclosure as a whole. The summary may point out the advantages 
of the invention or how it solves problems previously existent 
in the prior art (and preferably indicated in the Background of 
the Invention). In chemical cases it should point out in general 
terms the utility of the invention. If possible, the nature and gist of 
the invention or the inventive concept should be set forth. Objects 
of the invention should be treated briefly and only to the extent 
that they contribute to an understanding of the invention.

(h) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF 
THE DRAWING(S): See MPEP § 608.01(f). A reference to and 
brief description of the drawing(s) as set forth in 37 CFR 1.74.

(i) DETAILED DESCRIPTION OF THE INVENTION: See 
MPEP § 608.01(g). A description of the preferred embodiment(s) 
of the invention as required in 37 CFR 1.71. The description 
should be as short and specific as is necessary to describe the 
invention adequately and accurately. Where elements or groups of 
elements, compounds, and processes, which are conventional and 
generally widely known in the field of the invention described, 
and their exact nature or type is not necessary for an understanding 
and use of the invention by a person skilled in the art, they 
should not be described in detail. However, where particularly 
complicated subject matter is involved or where the elements, 
compounds, or processes may not be commonly or widely known 
in the field, the specification should refer to another patent or 
readily available publication which adequately describes the subject 
matter.

(j) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 
608.01(m). The claim or claims must commence on a separate 
sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets 
forth a plurality of elements or steps, each element or step of the 
claim should be separated by a line indentation. There may be plural 
indentations to further segregate subcombinations or related 
steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).

(k) ABSTRACT OF THE DISCLOSURE: See 37 CFR 
1.72(b) and MPEP § 608.01(b). A brief narrative of the disclosure 
as a whole in a single paragraph of 150 words or less commencing 
on a separate sheet following the claims. In an international application 
which has entered the national stage (37 CFR 1.491(b)), the 
applicant need not submit an abstract commencing on a separate 
sheet if an abstract was published with the international application 
under PCT Article 21. The abstract that appears on the cover 
page of the pamphlet published by the International Bureau (IB) 
of the World Intellectual Property Organization (WIPO) is the 
abstract that will be used by the USPTO. See MPEP § 1893.03(e).






(l) SEQUENCE LISTING: See 37 CFR 1.821-1.825 and 
MPEP §§ 2421-2431. The requirement for a sequence listing 
applies to all sequences disclosed in a given application, whether 
the sequences are claimed or not. See MPEP § 2421.02.

Examiner Note:

In this paragraph an introductory sentence will be necessary. 
This paragraph is intended primarily for use in pro se applications.



608.01(b)Abstract of the Disclosure [R-3]

37 CFR 1.72. Title and abstract.



(b)A brief abstract of the technical disclosure in the specification 
must commence on a separate sheet, preferably following 
the claims, under the heading “Abstract” or “Abstract of the Disclosure.” 
The sheet or sheets presenting the abstract may not 
include other parts of the application or other material. The 
abstract in an application filed under 35 U.S.C. 111 may not 
exceed 150 words in length. The purpose of the abstract is to 
enable the United States Patent and Trademark Office and the 
public generally to determine quickly from a cursory inspection 
the nature and gist of the technical disclosure.

The Office of Initial Patent Examination (OIPE) 
will review all applications filed under 35 U.S.C. 
111(a) for compliance with 37 CFR 1.72 and will 
require an abstract, if one has not been filed. In all 
other applications which lack an abstract, the examiner 
in the first Office action should require the submission 
of an abstract directed to the technical 
disclosure in the specification. See Form Paragraph 
6.12 (below). Applicants may use either “Abstract” or 
“Abstract of the Disclosure” as a heading.

If the abstract contained in the application does not 
comply with the guidelines, the examiner should point 
out the defect to the applicant in the first Office 
action, or at the earliest point in the prosecution that 
the defect is noted, and require compliance with the 
guidelines. Since the abstract of the disclosure has 
been interpreted to be a part of the specification for 
the purpose of compliance with paragraph 1 of 35 
U.S.C. 112 (In re Armbruster, 512 F.2d 676, 678-79, 
185 USPQ 152, 154 (CCPA 1975)), it would ordinarily 
be preferable that the applicant make the necessary 
changes to the abstract to bring it into 
compliance with the guidelines. See Form Paragraphs 
6.13-6.16 (below).

Replies to such actions requiring either a new 
abstract or amendment to bring the abstract into compliance 
with the guidelines should be treated under 37 
CFR 1.111(b) practice like any other formal matter. 
Any submission of a new abstract or amendment to an 
existing abstract should be carefully reviewed for 
introduction of new matter, 35 
U.S.C. 132, MPEP § 
608.04.

Upon passing the application to issue, the examiner 
should make certain that the abstract is an adequate 
and clear statement of the contents of the disclosure 
and generally in line with the guidelines. If the application 
is otherwise in condition for allowance except 
that the abstract does not comply with the guidelines, 
the examiner generally should make any necessary 
revisions by a formal examiner’s amendment after 
obtaining applicant’s authorization (see MPEP § 
1302.04 rather than issuing an Ex parte Quayle action 
requiring applicant to make the necessary revisions.

Under current practice, in all instances where the 
application contains an abstract when sent to issue, 
the abstract will be printed on the patent.

GUIDELINES FOR THE PREPARATION OF 
PATENT ABSTRACTS

A.Background

The Rules of Practice in Patent Cases require that 
each application for patent include an abstract of the 
disclosure, 37 CFR 1.72(b).

The content of a patent abstract should be such as to 
enable the reader thereof, regardless of his or her 
degree of familiarity with patent documents, to determine 
quickly from a cursory inspection of the nature 
and gist of the technical disclosure and should include 
that which is new in the art to which the invention 
pertains.

B.Content

A patent abstract is a concise statement of the technical 
disclosure of the patent and should include that 
which is new in the art to which the invention pertains.


If the patent is of a basic nature, the entire technical 
disclosure may be new in the art, and the abstract 
should be directed to the entire disclosure.






If the patent is in the nature of an improvement in 
old apparatus, process, product, or composition, the 
abstract should include the technical disclosure of the 
improvement.

In certain patents, particularly those for compounds 
and compositions, wherein the process for making 
and/or the use thereof are not obvious, the abstract 
should set forth a process for making and/or a use 
thereof.

If the new technical disclosure involves modifications 
or alternatives, the abstract should mention by 
way of example the preferred modification or alternative.


The abstract should not refer to purported merits or 
speculative applications of the invention and should 
not compare the invention with the prior art.

Where applicable, the abstract should include the 
following: (1) if a machine or apparatus, its organization 
and operation; (2) if an article, its method of making; 
(3) if a chemical compound, its identity and use; 
(4) if a mixture, its ingredients; (5) if a process, the 
steps. Extensive mechanical and design details of 
apparatus should not be given.

With regard particularly to chemical patents, for 
compounds or compositions, the general nature of the 
compound or composition should be given as well as 
the use thereof, e.g., “The compounds are of the class 
of alkyl benzene sulfonyl ureas, useful as oral anti-
diabetics.” Exemplification of a species could be 
illustrative of members of the class. For processes, the 
type reaction, reagents and process conditions should 
be stated, generally illustrated by a single example 
unless variations are necessary.

C. Language and Format

The abstract must commence on a separate sheet, 
preferably following the claims, under the heading 
“Abstract” or “Abstract of the Disclosure.” The sheet 
or sheets presenting the abstract may not include other 
parts of the application or other material. Form paragraph 
6.16.01 (below) may be used if the abstract 
does not commence on a separate sheet. Note that the 
abstract for a national stage application filed under 35 
U.S.C. 371 may be found on the front page of the 
Patent Cooperation Treaty publication (i.e., pamphlet). 
See MPEP § 1893.03(e).

The abstract should be in narrative form and generally 
limited to a single paragraph within the range of 
50 to 150 words. The abstract should not exceed 
15 lines of text. Abstracts exceeding 15 lines 
of text should be checked to see that it does not 
exceed 150 words in length since the space provided 
for the abstract on the computer tape by the printer is 
limited. If the abstract cannot be placed on the computer 
tape because of its excessive length, the application 
will be returned to the examiner for preparation 
of a shorter abstract. The form and legal phraseology 
often used in patent claims, such as “means” and 
“said,” should be avoided. The abstract should sufficiently 
describe the disclosure to assist readers in 
deciding whether there is a need for consulting the 
full patent text for details.

The language should be clear and concise and 
should not repeat information given in the title. It 
should avoid using phrases which can be implied, 
such as, “This disclosure concerns,” “The disclosure 
defined by this invention,” “This disclosure 
describes,” etc.

D.Responsibility

Preparation of the abstract is the responsibility of 
the applicant. Background knowledge of the art and 
an appreciation of the applicant’s contribution to the 
art are most important in the preparation of the 
abstract. The review of the abstract for compliance 
with these guidelines, with any necessary editing and 
revision on allowance of the application, is the 
responsibility of the examiner.

E.Sample Abstracts

(1) A heart valve which has an annular valve body 
defining an orifice and a plurality of struts forming 
a pair of cages on opposite sides of the orifice. A 
spherical closure member is captively held within 
the cages and is moved by blood flow between 
open and closed positions in check valve fashion. 
A slight leak or backflow is provided in the closed 
position by making the orifice slightly larger than 
the closure member. Blood flow is maximized in 
the open position of the valve by providing an 
inwardly convex contour on the orifice-defining 
surfaces of the body. An annular rib is formed in a 
channel around the periphery of the valve body to 
anchor a suture ring used to secure the valve 
within a heart.






(2) A method for sealing whereby heat is applied 
to seal, overlapping closure panels of a folding box 
made from paperboard having an extremely thin 
coating of moisture-proofing thermoplastic material 
on opposite surfaces. Heated air is directed at 
the surfaces to be bonded, the temperature of the 
air at the point of impact on the surfaces being 
above the char point of the board. The duration of 
application of heat is made so brief, by a corresponding 
high rate of advance of the boxes 
through the air stream, that the coating on the 
reverse side of the panels remains substantially 
non-tacky. The bond is formed immediately after 
heating within a period of time for any one surface 
point less than the total time of exposure to heated 
air of that point. Under such conditions the heat 
applied to soften the thermoplastic coating is dissipated 
after completion of the bond by absorption 
into the board acting as a heat sink without the 
need for cooling devices.

(3) Amides are produced by reacting an ester of a 
carbonized acid with an amine, using as catalyst an 
dioxide of an alkali metal. The ester is first heated 
to at least 75°C under a pressure of no more than 
500 mm. of mercury to remove moisture and acid 
gases which would prevent the reaction, and then 
converted to an amide without heating to initiate 
the reaction.

¶ 6.12 Abstract Missing (Background)

This application does not contain an abstract of the disclosure 
as required by 37 CFR 1.72(b). An abstract on a separate sheet is 
required.

Examiner Note:

1.For pro se applicant, consider form paragraphs 6.14 to 6.16.

2.This form paragraph should not be used during the national 
stage prosecution of international applications (“371 applications”) 
if an abstract was published with the international application 
under PCT Article 21.

¶ 6.13 Abstract Objected To: Minor Informalities

The abstract of the disclosure is objected to because [1]. Correction 
is required. See MPEP § 608.01(b).

Examiner Note:

In bracket 1, indicate the informalities that should be corrected. 
Use this paragraph for minor informalities such as the inclusion of 
legal phraseology, undue length, etc.

¶ 6.14 Abstract of the Disclosure: Content

Applicant is reminded of the proper content of an abstract of 
the disclosure.

A patent abstract is a concise statement of the technical disclosure 
of the patent and should include that which is new in the art 
to which the invention pertains. If the patent is of a basic nature, 
the entire technical disclosure may be new in the art, and the 
abstract should be directed to the entire disclosure. If the patent is 
in the nature of an improvement in an old apparatus, process, 
product, or composition, the abstract should include the technical 
disclosure of the improvement. In certain patents, particularly 
those for compounds and compositions, wherein the process for 
making and/or the use thereof are not obvious, the abstract should 
set forth a process for making and/or use thereof. If the new technical 
disclosure involves modifications or alternatives, the 
abstract should mention by way of example the preferred modification 
or alternative.

The abstract should not refer to purported merits or speculative 
applications of the invention and should not compare the invention 
with the prior art.

Where applicable, the abstract should include the following:

(1) if a machine or apparatus, its organization and operation;

(2) if an article, its method of making;

(3) if a chemical compound, its identity and use;

(4) if a mixture, its ingredients;

(5) if a process, the steps.

Extensive mechanical and design details of an apparatus 
should not be included in the abstract.

Examiner Note:

See form paragraph 6.16.

¶ 6.15 Abstract of the Disclosure: Chemical Cases

Applicant is reminded of the proper content of an abstract of 
the disclosure.

In chemical patent abstracts for compounds or compositions, 
the general nature of the compound or composition should be 
given as well as its use, e.g., “The compounds are of the class of 
alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” 
Exemplification of a species could be illustrative of members of 
the class. For processes, the type reaction, reagents and process 
conditions should be stated, generally illustrated by a single 
example unless variations are necessary. 

Complete revision of the content of the abstract is required on a 
separate sheet.

¶ 6.16 Abstract of the Disclosure: Language

Applicant is reminded of the proper language and format for an 
abstract of the disclosure.

The abstract should be in narrative form and generally limited 
to a single paragraph on a separate sheet within the range of 50 to 
150 words. It is important that the abstract not exceed 150 words 
in length since the space provided for the abstract on the computer 
tape used by the printer is limited. The form and legal phraseology 
often used in patent claims, such as “means” and “said,” 
should be avoided. The abstract should describe the disclosure 
sufficiently to assist readers in deciding whether there is a need 
for consulting the full patent text for details.

The language should be clear and concise and should not 
repeat information given in the title. It should avoid using phrases 
which can be implied, such as, “The disclosure concerns,” “The 






disclosure defined by this invention,” “The disclosure describes,” 
etc.

Examiner Note:

See also form paragraph 6.14.

¶ 6.16.01 Abstract of the Disclosure: Placement

The abstract of the disclosure does not commence on a separate 
sheet in accordance with 37 CFR 1.52(b)(4). A new abstract of 
the disclosure is required and must be presented on a separate 
sheet, apart from any other text. 

Examiner Note:

1.This paragraph should only be used for applications filed on 
or after September 23, 1996.

2.37 CFR 1.72(b) requires that the abstract be set forth on a 
separate sheet. This requirement applies to amendments to the 
abstract as well as to the initial filing of the application.

3.This form paragraph should not be used during the national 
stage prosecution of international applications (“371 applications”) 
if an abstract was published with the international application 
under PCT Article 21.

608.01(c)Background of the Invention 

The Background of the Invention ordinarily comprises 
two parts:

(1) Field of the Invention: A statement of the field 
of art to which the invention pertains. This statement 
may include a paraphrasing of the applicable U.S. 
patent classification definitions. The statement should 
be directed to the subject matter of the claimed invention.


(2) Description of the related art including information 
disclosed under 37 CFR 1.97 and 37 CFR 1.98: A 
paragraph(s) describing to the extent practical the 
state of the prior art or other information disclosed 
known to the applicant, including references to specific 
prior art or other information where appropriate. 
Where applicable, the problems involved in the prior 
art or other information disclosed which are solved by 
the applicant’s invention should be indicated. See also 
MPEP § 608.01(a), § 608.01(p) and §

707.05(b). 

608.01(d)Brief Summary of Invention

37 CFR 1.73. Summary of the invention.

A brief summary of the invention indicating its nature and substance, 
which may include a statement of the object of the invention, 
should precede the detailed description. Such summary 
should, when set forth, be commensurate with the invention as 
claimed and any object recited should be that of the invention as 
claimed.

Since the purpose of the brief summary of invention 
is to apprise the public, and more especially those 
interested in the particular art to which the invention 
relates, of the nature of the invention, the summary 
should be directed to the specific invention being 
claimed, in contradistinction to mere generalities 
which would be equally applicable to numerous preceding 
patents. That is, the subject matter of the 
invention should be described in one or more clear, 
concise sentences or paragraphs. Stereotyped general 
statements that would fit one application as well as 
another serve no useful purpose and may well be 
required to be canceled as surplusage, and, in the 
absence of any illuminating statement, replaced by 
statements that are directly on point as applicable 
exclusively to the case at hand.

The brief summary, if properly written to set out the 
exact nature, operation, and purpose of the invention, 
will be of material assistance in aiding ready understanding 
of the patent in future searches. The brief 
summary should be more than a mere statement of the 
objects of the invention, which statement is also permissible 
under 37 CFR 1.73.

The brief summary of invention should be consistent 
with the subject matter of the claims. Note final 
review of application and preparation for issue, 
MPEP § 1302.

608.01(e)Reservation Clauses Not Permitted


37 CFR 1.79. Reservation clauses not permitted.

A reservation for a future application of subject matter disclosed 
but not claimed in a pending application will not be permitted 
in the pending application, but an application disclosing 
unclaimed subject matter may contain a reference to a later filed 
application of the same applicant or owned by a common assignee 
disclosing and claiming that subject matter.

608.01(f)Brief Description of Drawings 
[R-3]

37 CFR 1.74. Reference to drawings.

When there are drawings, there shall be a brief description of 
the several views of the drawings and the detailed description of 
the invention shall refer to the different views by specifying the 
numbers of the figures, and to the different parts by use of reference 
letters or numerals (preferably the latter).

The Office of Initial Patent Examination (OIPE) 
will review the specification, including the brief 
description, to determine whether all of the figures of 






drawings described in the specification are present. If 
the specification describes a figure which is not 
present in the drawings, the application will be treated 
as an application filed without all figures of drawings 
in accordance with MPEP §

601.01(g), unless the 
application lacks any drawings, in 
which case the 
application will be treated as an application filed 
without drawings in accordance with MPEP 
§

601.01(f).

The examiner should see to it that the figures are 
correctly described in the brief description of the 
drawing, that all section lines used are referred to, and 
that all needed section lines are used. If a figure contains 
several parts, for example, figure 1A, 1B, and 
1C, the figure may be described as figure 1. If only 
figure 1A is described in the brief description, the 
examiner should object to the brief description, and 
require applicant to either add a brief description of 
figure 1B and 1C or describe the figure as “figure 1.”

The specification must contain or be amended to 
contain proper reference to the existence of drawings 
executed in color as required by 37 CFR 1.84.

37 CFR 1.84. Standards for drawings.

(a)Drawings. There are two acceptable categories for presenting 
drawings in utility and design patent applications.

(1)Black ink. Black and white drawings are normally 
required. India ink, or its equivalent that secures solid black lines, 
must be used for drawings; or



(2)Color. On rare occasions, color drawings may be necessary 
as the only practical medium by which to disclose the subject 
matter sought to be patented in a utility or design patent 
application or the subject matter of a statutory invention registration. 
The color drawings must be of sufficient quality such that all 
details in the drawings are reproducible in black and white in the 
printed patent. Color drawings are not permitted in international 
applications (see PCT Rule 11.13), or in an application, or copy 
thereof, submitted under the Office electronic filing system. The 
Office will accept color drawings in utility or design patent applications 
and statutory invention registrations only after granting a 
petition filed under this paragraph explaining why the color drawings 
are necessary. Any such petition must include the following:

(i)The fee set forth in § 1.17(h);

(ii)Three (3) sets of color drawings;

(iii)An amendment to the specification to insert 
(unless the specification contains or has been previously amended 
to contain) the following language as the first paragraph of the 
brief description of the drawings:

The patent or application file contains at least one drawing 
executed in color. Copies of this patent or patent application 
publication with color drawing(s) will be provided by 
the Office upon request and payment of the necessary fee.

(b)Photographs.— 

(1)Black and white. Photographs, including photocopies 
of photographs, are not ordinarily permitted in utility and design 
patent applications. The Office will accept photographs in utility 
and design patent applications, however, if photographs are the 
only practicable medium for illustrating the claimed invention. 
For example, photographs or photomicrographs of: electrophoresis 
gels, blots (e.g., immunological, western, Southern, and northern), 
auto- radiographs, cell cultures (stained and unstained), 
histological tissue cross sections (stained and unstained), animals, 
plants, in vivo imaging, thin layer chromatography plates, crystalline 
structures, and, in a design patent application, ornamental 
effects, are acceptable. If the subject matter of the application 
admits of illustration by a drawing, the examiner may require a 
drawing in place of the photograph. The photographs must be of 
sufficient quality so that all details in the photographs are reproducible 
in the printed patent.

(2)Color photographs. Color photographs will be 
accepted in utility and design patent applications if the conditions 
for accepting color drawings and black and white photographs 
have been satisfied. See paragraphs (a)(2) and (b)(1) of this section.




608.01(g)Detailed Description of Invention 


A detailed description of the invention and drawings 
follows the general statement of invention and 
brief description of the drawings. This detailed 
description, required by 37 CFR 1.71, MPEP § 
608.01, must be in such particularity as to enable any 
person skilled in the pertinent art or science to make 
and use the invention without involving extensive 
experimentation. An applicant is ordinarily permitted 
to use his or her own terminology, as long as it can be 
understood. Necessary grammatical corrections, however, 
should be required by the examiner, but it must 
be remembered that an examination is not made for 
the purpose of securing grammatical perfection.

The reference characters must be properly applied, 
no single reference character being used for two different 
parts or for a given part and a modification of 
such part. In the latter case, the reference character, 
applied to the given part, with a prime affixed may 
advantageously be applied to the modification. Every 
feature specified in the claims must be illustrated, but 
there should be no superfluous illustrations.

The description is a dictionary for the claims and 
should provide clear support or antecedent basis for 






all terms used in the claims. See 37 CFR 1.75, MPEP 
§ 608.01(i), §

608.01(o), and § 1302.01.

For completeness, see MPEP § 608.01(p).

USE OF SYMBOL “Phi” IN PATENT APPLICATION


The Greek letter “Phi” has long been used as a symbol 
in equations in all technical disciplines. It further 
has special uses which include the indication of an 
electrical phase or clocking signal as well as an angular 
measurement. The recognized symbols for the 
upper and lower case Greek Phi characters, however, 
do not appear on most typewriters. This apparently 
has led to the use of a symbol composed by first striking 
a zero key and then backspacing and striking the 
“cancel” or “slash” key to result in an approximation 
of accepted symbols for the Greek character Phi. In 
other instances, the symbol is composed using the 
upper or lower case letter “O” with the “cancel” or 
“slash” superimposed thereon by backspacing, or it is 
simply handwritten in a variety of styles. These expedients 
result in confusion because of the variety of 
type sizes and styles available on modern typewriters.

In recent years, the growth of data processing has 
seen the increasing use of this symbol (“Ø”) as the 
standard representation of zero. The “slashed” or 
“canceled” zero is used to indicate zero and avoid 
confusion with the upper case letter “O” in both text 
and drawings.

Thus, when the symbol “Ø” in one of its many variations, 
as discussed above, appears in patent applications 
being prepared for printing, confusion as to the 
intended meaning of the symbol arises. Those (such 
as examiners, attorneys, and applicants) working in 
the art can usually determine the intended meaning of 
this symbol because of their knowledge of the subject 
matter involved, but editors preparing these applications 
for printing have no such specialized knowledge 
and confusion arises as to which symbol to print. The 
result, at the very least, is delay until the intended 
meaning of the symbol can be ascertained.

Since the Office does not have the resources to conduct 
a technical editorial review of each application 
before printing, and in order to eliminate the problem 
of printing delays associated with the usage of these 
symbols, any question about the intended symbol will 
be resolved by the editorial staff of the Office of 
Patent Publication by printing the symbol Ø whenever 
that symbol is used by the applicant. Any Certificate 
of Correction necessitated by the above practice will 
be at the patentee’s expense (37 CFR 1.323) because 
the intended symbol was not accurately presented by 
the Greek upper or lower case Phi letters in the patent 
application.

608.01(h)Mode of Operation of Invention 

The best mode contemplated by the inventor of carrying 
out his or her invention must be set forth in the 
description. See 35 U.S.C. 112. There is no statutory 
requirement for the disclosure of a specific example. 
A patent specification is not intended nor required to 
be a production specification. Spectra-Physics, Inc. v. 
Coherent, Inc., 827 F.2d 1524, 1536, 3 USPQ2d 1737, 
1745 (Fed. Cir. 1987); In re Gay, 309 F.2d 769, 135 
USPQ 311 (CCPA 1962). The absence of a specific 
working example is not necessarily evidence that the 
best mode has not been disclosed, nor is the presence 
of one evidence that it has. In re Honn, 364 F.2d 454, 
150 USPQ 652 (CCPA 1966). In determining the adequacy 
of a best mode disclosure, only evidence of 
concealment (accidental or intentional) is to be considered. 
That evidence must tend to show that the 
quality of an applicant’s best mode disclosure is so 
poor as to effectively result in concealment. Spectra-
Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1536, 3 
USPQ2d 1737, 1745 (Fed. Cir. 1987); In re Sherwood, 
613 F.2d 809, 204 USPQ 537 (CCPA 1980).

The question of whether an inventor has or has not 
disclosed what he or she feels is his or her best mode 
is a question separate and distinct from the question of 
sufficiency of the disclosure. Spectra-Physics, Inc. v. 
Coherent, Inc., 827 F.2d 1524, 1532, 3 USPQ2d 1737, 
1742 (Fed. Cir. 1987); In re Glass, 492 F.2d 1228, 181 
USPQ 31 (CCPA 1974); In re Gay, 309 F.2d 769, 135 
USPQ 311 (CCPA 1962). See 35 U.S.C. 112 and 37 
CFR 1.71(b).

If the best mode contemplated by the inventor at the 
time of filing the application is not disclosed, such 
defect cannot be cured by submitting an 
amendment 
seeking to put into the specification 
something required to be there when the application 
was originally filed. In re Hay, 534 F.2d 917, 189 
USPQ 790 (CCPA 1976). Any proposed amendment 
of this type should be treated as new matter.

Patents have been held invalid in cases where the 
patentee did not disclose the best mode known to him 






or her. See Chemcast Corp. v. Arco Indus. Corp., 913 
F.2d 923. 16 USPQ2d 1033 (Fed. Cir. 1990); Dana 
Corp. v. IPC Ltd. Partnership, 860 F.2d 415, 8 
USPQ2d 1692 (Fed. Cir. 1988); Spectra-Physics, Inc. 
v. Coherent, Inc., 821 F.2d 1524, 3 USPQ2d 1737 
(Fed. Cir. 1987).

For completeness, see MPEP § 608.01(p) and § 
2165 to § 2165.04.

608.01(i)Claims [R-3]

37 CFR 1.75. Claims

(a)The specification must conclude with a claim particularly 
pointing out and distinctly claiming the subject matter which 
the applicant regards as his invention or discovery.

(b)More than one claim may be presented provided they differ 
substantially from each other and are not unduly multiplied.

(c)One or more claims may be presented in dependent 
form, referring back to and further limiting another claim or 
claims in the same application. Any dependent claim which refers 
to more than one other claim (“multiple dependent claim”) shall 
refer to such other claims in the alternative only. A multiple 
dependent claim shall not serve as a basis for any other multiple 
dependent claim. For fee calculation purposes under § 1.16, a 
multiple dependent claim will be considered to be that number of 
claims to which direct reference is made therein. For fee calculation 
purposes also, any claim depending from a multiple dependent 
claim will be considered to be that number of claims to which 
direct reference is made in that multiple dependent claim. In addition 
to the other filing fees, any original application which is filed 
with, or is amended to include, multiple dependent claims must 
have paid therein the fee set forth in § 1.16(j). Claims in dependent 
form shall be construed to include all the limitations of the 
claim incorporated by reference into the dependent claim. A multiple 
dependent claim shall be construed to incorporate by reference 
all the limitations of each of the particular claims in relation 
to which it is being considered.

(d)(1)The claim or claims must conform to the invention as 
set forth in the remainder of the specification and the terms and 
phrases used in the claims must find clear support or antecedent 
basis in the description so that the meaning of the terms in the 
claims may be ascertainable by reference to the description (See § 
1.58(a).)

(2)See §§ 1.141 to 1.146 as to claiming different inventions 
in one application.

(e)Where the nature of the case admits, as in the case of an 
improvement, any independent claim should contain in the following 
order:

(1)A preamble comprising a general description of all the 
elements or steps of the claimed combination which are conventional 
or known,

(2)A phrase such as “wherein the improvement comprises,” 
and

(3)Those elements, steps, and/or relationships which 
constitute that portion of the claimed combination which the 
applicant considers as the new or improved portion.

(f)If there are several claims, they shall be numbered consecutively 
in Arabic numerals.

(g)The least restrictive claim should be presented as claim 
number 1, and all dependent claims should be grouped together 
with the claim or claims to which they refer to the extent practicable.


(h)The claim or claims must commence on a separate physical 
sheet or electronic page. Any sheet including a claim or portion 
of a claim may not contain any other parts of the application 
or other material.

(i)Where a claim sets forth a plurality of elements or steps, 
each element or step of the claim should be separated by a line 
indentation.

For numbering of claims, see MPEP § 608.01(j).

For form of claims, see MPEP § 608.01(m).

For dependent claims, see MPEP § 608.01(n).

For examination of claims, see MPEP § 706.

For claims in excess of fee, see MPEP § 714.10. 

608.01(j)Numbering of Claims

37 CFR 1.126. Numbering of claims.

The original numbering of the claims must be preserved 
throughout the prosecution. When claims are canceled the remaining 
claims must not be renumbered. When claims are added, they 
must be numbered by the applicant consecutively beginning with 
the number next following the highest numbered claim previously 
presented (whether entered or not). When the application is ready 
for allowance, the examiner, if necessary, will renumber the 
claims consecutively in the order in which they appear or in such 
order as may have been requested by applicant.

In a single claim case, the claim is not numbered.

Form paragraph 6.17 may be used to notify applicant.


¶ 6.17 Numbering of Claims, 37 CFR 1.126

The numbering of claims is not accordance with 37 CFR 
1.126, which requires the original numbering of the claims to be 
preserved throughout the prosecution. When claims are canceled, 
the remaining claims must not be renumbered. When new claims 
are presented, they must be numbered consecutively beginning 
with the number next following the highest numbered claims previously 
presented (whether entered or not).

Misnumbered claim [1] been renumbered [2].

Examiner Note:

1.In bracket 1, insert appropriate claim number(s) and --has-- 
or -- have --.

2.In bracket 2, insert correct claim number(s) and --, respectively 
-- if more than one claim is involved.






608.01(k)Statutory Requirement of 
Claims

35 U.S.C. 112 requires that the applicant shall particularly 
point out and distinctly claim the subject 
matter which he or she regards as his or her invention. 
The portion of the application in which he or she does 
this forms the claim or claims. This is an important 
part of the application, as it is the definition of that for 
which protection is granted.

====608.01(l) Original Claims====

In establishing a disclosure, applicant may rely not 
only on the description and drawing as filed but also 
on the original claims if their content justifies it.

Where subject matter not shown in the drawing or 
described in the description is claimed in the application 
as filed, and such original claim itself constitutes 
a clear disclosure of this subject matter, then the claim 
should be treated on its merits, and requirement made 
to amend the drawing and description to show this 
subject matter. The claim should not be attacked 
either by objection or rejection because this subject 
matter is lacking in the drawing and description. It is 
the drawing and description that are defective, not the 
claim.

It is, of course, to be understood that this disclosure 
in the claim must be sufficiently specific and detailed 
to support the necessary amendment of the drawing 
and description.

====608.01(m) Form of Claims====

The claim or claims must commence on a separate 
physical sheet or electronic page and should appear 
after the detailed description of the invention. Any 
sheet including a claim or portion of a claim may not 
contain any other parts of the application or other 
material. While there is no set statutory form for 
claims, the present Office practice is to insist that each 
claim must be the object of a sentence starting with "I 
(or we) claim," "The invention claimed is" (or the 
equivalent). If, at the time of allowance, the quoted 
terminology is not present, it is inserted by the Office 
of Patent Publication. Each claim begins with a capital 
letter and ends with a period. Periods may not be 
used elsewhere in the claims except for abbreviations. Where a claim sets forth a plurality of elements 
or steps, each element or step of the claim should be 
separated by a line indentation, 37 
CFR 1.75(i).

Claims should preferably be arranged in order of 
scope so that the first claim presented is the least 
restrictive. All dependent claims should be grouped 
together with the claim or claims to which they refer 
to the extent practicable. Where separate species are 
claimed, the claims of like species should be grouped 
together where possible. Similarly, product and process 
claims should be separately grouped. Such 
arrangements are for the purpose of facilitating classification 
and examination.

Amendments to the claims must be in compliance 
with 37 CFR 1.121(c). 

====608.01(n) Dependent Claims====

I.MULTIPLE DEPENDENT CLAIMS

{{Statute|37 CFR 1.75. Claim(s).}}
{{Ellipsis}}
(c)One or more claims may be presented in dependent form, 
referring back to and further limiting another claim or claims in 
the same application. Any dependent claim which refers to more 
than one other claim ("multiple dependent claim") shall refer to 
such other claims in the alternative only. A multiple dependent 
claim shall not serve as a basis for any other multiple dependent 
claim. For fee calculation purposes under § 1.16, a multiple 
dependent claim will be considered to be that number of claims to 
which direct reference is made therein. For fee calculation purposes 
also, any claim depending from a multiple dependent claim 
will be considered to be that number of claims to which direct reference 
is made in that multiple dependent claim. In addition to the 
other filing fees, any original application which is filed with, or is 
amended to include, multiple dependent claims must have paid 
therein the fee set forth in § 1.16(j). Claims in dependent form 
shall be construed to include all the limitations of the claim incorporated 
by reference into the dependent claim. A multiple dependent 
claim shall be construed to incorporate by reference all the 
limitations of each of the particular claims in relation to which it is 
being considered.
{{Ellipsis}}
|}


Generally, a multiple dependent claim is a dependent 
claim which refers back in the alternative to 
more than one preceding independent or dependent 
claim.

Cumulative claiming (e.g., "A machine 
according to claims 3 and 4, further comprising ---") 
is not permitted. A multiple dependent claim may 
refer in the alternative to only one set of claims. A 
claim such as "A device as in claims 1, 2, 3, or 4, 
made by a process of claims 5, 6, 7, or 8" is improper. 
35 U.S.C. 112 allows reference to only a particular 
claim.

A multiple dependent claim may 
not serve as a basis for any other multiple dependent 
claim, either directly or indirectly.

Assume each claim example given below is from a 
different application.

A. Acceptable Multiple Dependent Claim Wording

<p style="padding-left: +20px;">Claim 5. A gadget according to claims 3 or 4, further 
comprising ---</p>

<p style="padding-left: +20px;">Claim 5. A gadget as in any one of the preceding 
claims, in which ---</p>

<p style="padding-left: +20px;">Claim 5. A gadget as in any one of claims 1, 2, and 
3, in which ---</p>

<p style="padding-left: +20px;">Claim 3. A gadget as in either claim 1 or claim 2, 
further comprising ---</p>

<p style="padding-left: +20px;">Claim 4. A gadget as in claim 2 or 3, further 
comprising ---</p>

<p style="padding-left: +20px;">Claim 16. A gadget as in claims 1, 7, 12, or 15, further 
comprising ---</p>

<p style="padding-left: +20px;">Claim 5. A gadget as in any of the preceding 
claims, in which ---</p>

<p style="padding-left: +20px;">Claim 8. A gadget as in one of claims 4-7, in which ---</p>

<p style="padding-left: +20px;">Claim 5. A gadget as in any preceding claim, in which ---</p>

<p style="padding-left: +20px;">Claim 10. A gadget as in any of claims 1-3 or 7-9, in which ---</p>

<p style="padding-left: +20px;">Claim 11. A gadget as in any one of claims 1, 2, or 7-10 inclusive, in which ---</p>

B.Unacceptable Multiple Dependent Claim Wording

<p style="padding-left: +20px;">1.Claim Does Not Refer Back in the Alternative 
Only</p>

<p style="padding-left: +40px;">Claim 5. A gadget according to claim 3 and 4, further 
comprising ---</p>

<p style="padding-left: +40px;">Claim 9. A gadget according to claims 1-3, in 
which ---</p>

<p style="padding-left: +40px;">Claim 9. A gadget as in claims 1 or 2 and 7 or 8, 
which 
---</p>

<p style="padding-left: +40px;">Claim 6. A gadget as in the preceding claims in 
which --- </p>

<p style="padding-left: +40px;">Claim 6. A gadget as in claims 1, 2, 3, 4 and/or 5, in 
which ---</p>

<p style="padding-left: +40px;">Claim 10. A gadget as in claims 1-3 or 7-9, in 
which ---</p>

<p style="padding-left: +20px;">2.Claim Does Not Refer to a Preceding Claim</p>

<p style="padding-left: +40px;">Claim 3. A gadget as in any of the following 
claims, in which ---</p>

<p style="padding-left: +40px;">Claim 5. A gadget as in either claim 6 or claim 8, in 
which ---</p>

<p style="padding-left: +20px;">3.Reference to Two Sets of Claims to Different 
Features</p>

<p style="padding-left: +40px;">Claim 9. A gadget as in claim 1 or 4 made by the 
process of claims 5, 6, 7, or 8, in which ---</p>

<p style="padding-left: +20px;">4.Reference Back to Another Multiple Dependent 
Claim</p>

<p style="padding-left: +40px;">Claim 8. A gadget as in claim 5 (claim 5 is a multiple 
dependent claim) or claim 7, in which ---</p>

35 U.S.C. 112 indicates that the limitations or elements 
of each claim incorporated by reference into a 
multiple dependent claim must be considered separately. 
Thus, a multiple dependent claim, as such, does 
not contain all the limitations of all the alternative 
claims to which it refers, but rather contains in any 
one embodiment only those limitations of the particular 
claim referred to for the embodiment under consideration. 
Hence, a multiple dependent claim must be 
considered in the same manner as a plurality of single 
dependent claims.

C.Restriction Practice

For restriction purposes, each embodiment of a 
multiple dependent claim is considered in the same 
manner as a single dependent claim. Therefore, 
restriction may be required between the embodiments 
of a multiple dependent claim. Also, some embodiments 
of a multiple dependent claim may be held 
withdrawn while other embodiments are considered 
on their merits. 

D.Handling of Multiple Dependent Claims by 
the Examiner

The following procedures are to be followed by 
examiners when faced with claims which refer to 
numerically succeeding claims:

If any series of dependent claims contains a claim 
with an improper reference to a numerically following 
claim which cannot be understood, the claim referring 
to a following claim should normally be objected to 
and not treated on the merits.

However, in situations where a claim refers to a 
numerically following claim and the dependency is 
clear, both as presented and as it will be renumbered 
at issue, all claims should be examined on the merits 
and no objection as to form need be made. In such 
cases, the examiner will renumber the claims into 
proper order at the time the application is allowed. 

E.Fees for Multiple Dependent Claims

1. Calculation of Fees

(a)Proper Multiple Dependent Claim

A multiple dependent claim is considered 
to be that number of dependent claims to which it 
refers. Any proper claim depending directly or indirectly 
from a multiple dependent claim is also considered 
as the number of dependent claims as referred to 
in the multiple dependent claim from which it 
depends.

(b)Improper Multiple Dependent Claim

If none of the multiple dependent claims is proper, 
the multiple dependent claim fee set forth in 37 CFR 
1.16(j) will not be required.

The fee for any improper multiple dependent 
claim, whether it is defective for either not being in 
the alternative form or for being directly or indirectly 
dependent on a prior multiple dependent claim, will 
only be one, since only an objection to the form of 
such a claim will normally be made. This procedure 
also greatly simplifies the calculation of fees. Any 
claim depending from an improper multiple dependent 
claim will also be considered to be improper and 
be counted as one dependent claim.

(c)Fee calculation example

{| border="1" cellspacing="0" cellpadding="5" align="center"
!Claim No.
!&nbsp;
!Ind.
!Dep.
|-
|1.
|Independent
|1
|&nbsp;
|-
|2.
|Dependent on claim 1
|&nbsp;
|1 
|-
|3.
|Dependent on claim 2
|&nbsp;
|1 
|-
|4.
|Dependent on claim 2 or 3
|&nbsp;
|2 
|-
|5.
|Dependent on claim 4
|&nbsp;
|2 
|-
|6.
|Dependent on claim 5
|&nbsp;
|2 
|-
|7.
|Dependent on claim 4, 5, or 6
|&nbsp;
|style="font-style:bold;color:red;"|1 
|-
|8.
|Dependent on claim 7
|&nbsp;
|style="font-style:bold;color:red;"|1 
|-
|9.
|Independent
|1
|&nbsp;
|-
|10.
|Dependent on claim 1 or 9
|&nbsp;
|2 
|-
|11.
|Dependent on claim 1 and 9
|&nbsp;
|style="font-style:bold;color:red;"|1 
|}


'''i) Comments On Fee Calculation Example'''

Claim 1 — This is an independent claim; therefore, 
a numeral "1" is placed opposite claim number 1 in 
the "Ind." column.

Claim 2 — Since this is a claim dependent on a 
single independent claim, a numeral "1" is placed 
opposite claim number 2 of the "Dep." column.

Claim 3 — Claim 3 is also a single dependent 
claim, so a numeral "1" is placed in the "Dep." column.

Claim 4 — Claim 4 is a proper multiple dependent 
claim. It refers directly to two claims in the alternative, 
namely, claim 2 or 3. Therefore, a numeral "2" to 
indicate direct reference to two claims is placed in the 
"Dep." column opposite claim number 4.

Claim 5 — This claim is a singularly dependent 
claim depending from a multiple dependent claim. 
For fee calculation purposes, such a claim is counted 
as being that number of claims to which direct reference 
is made in the multiple dependent claim from 
which it depends. In this case, the multiple dependent 
claim number 4 it depends from counts as 2 claims; therefore, claim 5 also counts as 2 claims. Accordingly, 
a numeral "2" is placed opposite claim number 
5 in the "Dep." column.

Claim 6 — Claim 6 depends indirectly from a multiple 
dependent claim 4. Since claim 4 counts as 2 
claims, claim 6 also counts as 2 dependent claims. 
Consequently, a numeral "2" is placed in the "Dep." 
column after claim 6.

Claim 7 — This claim is a multiple dependent 
claim since it refers to claims 4, 5, or 6. However, as can be seen by looking at the "2" in the "Dep." column 
opposite claim 4, claim 7 depends from a multiple 
dependent claim. This practice is improper under 
35 U.S.C.112 and 37 CFR 1.75(c). Following the procedure 
for calculating fees for improper multiple 
dependent claims, a numeral "1" is placed in the 
"Dep." column.

Claim 8 — Claim 8 is improper since it depends 
from an improper claim. If the base claim is in error, 
this error cannot be corrected by adding additional 
claims depending therefrom. Therefore, a numeral "1" 
is placed in the "Dep." column.

Claim 9 — Here again we have an independent 
claim which is always indicated with a numeral "1" in 
the "Ind." column opposite the claim number.

Claim 10 — This claim refers to two independent 
claims in the alternative. A numeral "2" is, therefore, 
placed in the "Dep." column opposite claim 10.

Claim 11 — Claim 11 is a dependent claim which 
refers to two claims in the conjunctive ("1" and "9") 
rather than in the alternative ("1" or "9"). This form is 
improper under 35 U.S.C. 112 and 37 CFR 1.75(c). 
Accordingly, since claim 11 is improper, a number "1" is placed in the "Dep." column opposite Claim 11.

ii) Calculation of Fee in Fee Example

After the number of "Ind." and "Dep." claims are 
noted, each column is added. 
In this example, there are 2 independent claims and 13 dependent claims or a total of 15 claims.

II. TREATMENT OF IMPROPER DEPENDENT 
CLAIMS

Any claim which is in dependent form but 
which is so worded that it, in fact is not, as, for example, 
it does not include every limitation of the claim 
on which it depends, will be required to be canceled as not being a proper dependent claim; and cancelation 
of any further claim depending on such a dependent 
claim will be similarly required.

The applicant may 
thereupon amend the claims to place them in proper 
dependent form, or may redraft them as independent 
claims, upon payment of any necessary additional fee.

Note, that although 37 CFR 1.75(c) requires the 
dependent claim to further limit a preceding claim, 
this rule does not apply to product-by-process claims.

III.INFRINGEMENT TEST

The test as to whether a claim is a proper dependent 
claim is that it shall include every limitation of the 
claim from which it depends ([[35_U.S.C.#35_U.S.C._112_Specification.|35 U.S.C. 112]], fourth 
paragraph) or in other words that it shall not conceivably 
be infringed by anything which would not also 
infringe the basic claim.

A dependent claim does not lack compliance with 
35 
U.S.C. 112, fourth paragraph, simply because there 
is a question as to (1) the significance of the further 
limitation added by the dependent claim, or (2) 
whether the further limitation in fact changes the 
scope of the dependent claim from that of the claim 
from which it depends. The test for a proper dependent 
claim under the fourth paragraph of 35 
U.S.C. 
112 is whether the dependent claim includes every 
limitation of the claim from which it depends. The test 
is not one of whether the claims differ in scope.

Thus, for example, if claim 1 recites the combination 
of elements A, B, C, and D, a claim reciting the 
structure of claim 1 in which D was omitted or 
replaced by E would not be a proper dependent claim, 
even though it placed further limitations on the 
remaining elements or added still other elements.

Examiners are reminded that a dependent claim is 
directed to a combination including everything recited 
in the base claim and what is recited in the dependent 
claim. It is this combination that must be compared 
with the prior art, exactly as if it were presented as 
one independent claim.

The fact that the independent and dependent claims 
are in different statutory classes does not, in itself, 
render the latter improper. Thus, if claim 1 recites a 
specific product, a claim for the method of making the 
product of claim 1 in a particular manner would be a 
proper dependent claim since it could not be infringed 
without infringing claim 1. Similarly, if claim 1 
recites a method of making a product, a claim for a 
product made by the method of claim 1 could be a 
proper dependent claim. On the other hand, if claim 1 
recites a method of making a specified product, a 
claim to the product set forth in claim 1 would not be 
a proper dependent claim since it is conceivable that 
the product claim can be infringed without infringing 
the base method claim if the product can be made by a 
method other than that recited in the base method 
claim. 

IV.CLAIM FORM AND ARRANGEMENT

A singular dependent claim 2 could read as follows:

2. The product of claim 1 in which . . . .

A series of singular dependent claims is permissible 
in which a dependent claim refers to a preceding 
claim which, in turn, refers to another preceding 
claim.

A claim which depends from a dependent claim 
should not be separated therefrom by any claim which 
does not also depend from said "dependent claim." It 
should be kept in mind that a dependent claim may 
refer back to any preceding independent claim.

V.REJECTION AND OBJECTION

If the base claim has been canceled, a claim which 
is directly or indirectly dependent thereon should be 
rejected as incomplete. If the base claim is rejected, 
the dependent claim should be objected to rather than 
rejected, if it is otherwise allowable.

====608.01(o) Basis for Claim Terminology in Description====

The meaning of every term used in any of the 
claims should be apparent from the descriptive portion 
of the specification with clear disclosure as to its 
import; and in mechanical cases, it should be identified 
in the descriptive portion of the specification by 
reference to the drawing, designating the part or parts 
therein to which the term applies. A term used in the 
claims may be given a special meaning in the description. 
See MPEP § 2111.01 and § 2173.05(a).

Usually the terminology of the original claims follows 
the nomenclature of the specification, but sometimes 
in amending the claims or in adding new claims, 
new terms are introduced that do not appear in the 
specification. The use of a confusing variety of terms 
for the same thing should not be permitted.

New claims and amendments to the claims already 
in the application should be scrutinized not only for 
new matter but also for new terminology. While an 
applicant is not limited to the nomenclature used in 
the application as filed, he or she should make appropriate 
amendment of the specification whenever this 
nomenclature is departed from by amendment of the 
claims so as to have clear support or antecedent basis 
in the specification for the new terms appearing in the 
claims. This is necessary in order to insure certainty in 
construing the claims in the light of the specification. See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01.

====608.01(p) Completeness====

A disclosure in an application, to be complete, must 
contain such description and details as to enable any 
person skilled in the art or science to which the invention 
pertains to make and use the invention as of its 
filing date.

While the prior art setting may be mentioned in 
general terms, the essential novelty, the essence of the 
invention, must be described in such details, including 
proportions and techniques, where necessary, as to 
enable those persons skilled in the art to make and utilize 
the invention.

Specific operative embodiments or examples of the 
invention must be set forth. Examples and description 
should be of sufficient scope as to justify the scope of 
the claims. ''Markush claims must be provided with 
support in the disclosure for each member of the 
Markush group. Where the constitution and formula 
of a chemical compound is stated only as a probability 
or speculation, the disclosure is not sufficient to support 
claims identifying the compound by such composition 
or formula.

A complete disclosure should include a statement 
of utility. This usually presents no problem in 
mechanical cases. In chemical cases, varying degrees 
of specificity are required.

A disclosure involving a new chemical compound 
or composition must teach persons skilled in the art 
how to make the compound or composition. Incomplete 
teachings may not be completed by reference to 
subsequently filed applications.

I.INCORPORATION BY REFERENCE

{{Statute|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). 

<p style="padding-left: +20px;">(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:</p>

<p style="padding-left: +40px;">(i) Supply a copy of the prior-filed application, except 
where the prior-filed application is an application filed under 35 U.S.C. 111;</p>

<p style="padding-left: +40px;">(ii) Supply an English language translation of any 
prior-filed application that is in a language other than English; and</p>

<p style="padding-left: +40px;">(iii)Identify where the inadvertently omitted portion of 
the specification or drawings can be found in the prior-filed application.</p>

<p style="padding-left: +20px;">(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.</p>

<p style="padding-left: +20px;">(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).</p>

(b)Except as provided in paragraph (a) of this section, an 
incorporation by reference must be set forth in the specification 
and must:

<p style="padding-left: +20px;">(1)Express a clear intent to incorporate by reference 
by using the root words “incorporat(e)” and “reference” (e.g., 
“incorporate by reference”); and</p>

<p style="padding-left: +20px;">(2)Clearly identify the referenced patent, application, 
or publication.</p>

(c)“Essential material” may be incorporated by reference, 
but only by way of an incorporation by reference to a U.S. patent 
or U.S. patent application publication, which patent or patent 
application publication does not itself incorporate such essential 
material by reference. “Essential material” is material that is necessary 
to:

<p style="padding-left: +20px;">(1)Provide a written description of the claimed invention, 
and of the manner and process of making and using it, in 
such full, clear, concise, and exact terms as to enable any person 
skilled in the art to which it pertains, or with which it is most 
nearly connected, to make and use the same, and set forth the best 
mode contemplated by the inventor of carrying out the invention 
as required by the first paragraph of 35 U.S.C. 112;</p>

<p style="padding-left: +20px;">(2)Describe the claimed invention in terms that particularly 
point out and distinctly claim the invention as required by the 
second paragraph of 35 U.S.C. 112; or</p>

<p style="padding-left: +20px;">(3)Describe the structure, material, or acts that correspond 
to a claimed means or step for performing a specified function 
as required by the sixth paragraph of 35 U.S.C. 112.</p>

(d)Other material (“Nonessential material”) may be incorporated 
by reference to U.S. patents, U.S. patent application publications, 
foreign patents, foreign published applications, prior and 
concurrently filed commonly owned U.S. applications, or non-
patent publications. An incorporation by reference by hyperlink or 
other form of browser executable code is not permitted.

(e)The examiner may require the applicant to supply a copy 
of the material incorporated by reference. If the Office requires 
the applicant to supply a copy of material incorporated by reference, 
the material must be accompanied by a statement that the 
copy supplied consists of the same material incorporated by reference 
in the referencing application.

(f)Any insertion of material incorporated by reference into 
the specification or drawings of an application must be by way of 
an amendment to the specification or drawings. Such an amendment 
must be accompanied by a statement that the material being 
inserted is the material previously incorporated by reference and 
that the amendment contains no new matter.

(g)An incorporation of material by reference that does not 
comply with paragraphs (b), (c), or (d) of this section is not effective 
to incorporate such material unless corrected 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. In addition:

<p style="padding-left: +20px;">(1)A correction to comply with paragraph (b)(1) of this 
section is permitted only if the application as file d clearly conveys 
an intent to incorporate the material by reference. A mere 
reference to material does not convey an intent to incorporate the 
material by reference.</p>

<p style="padding-left: +20px;">(2)A correction to comply with paragraph (b)(2) of this 
section is only permitted for material that was sufficiently 
described to uniquely identify the document.</p>
|}


The Director has considerable discretion in determining 
what may or may not be incorporated by reference 
in a patent application. Effective October 21, 2004, the Office codified in 37 CFR 1.57(b) – (g) existing practice with 
respect to explicit incorporations by reference with a 
few changes to reflect the eighteen-month publication 
of applications. In addition, 37 CFR 1.57(a) was 
added 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 
inadvertently omitted from an application, such as 
through a clerical error. 37 CFR 1.57(a) applies to 
applications filed on or after September 21, 2004. 37 
CFR 1.57(a) permits 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 
a prior-filed application (for which priority/benefit is 
claimed) even though there is no explicit incorporation 
by reference of the prior-filed application. See 
MPEP § 201.17 for discussion regarding 37 CFR 
1.57(a). 

The incorporation by reference practice with 
respect to applications which issue as U.S. patents 
provides the public with a patent disclosure which 
minimizes the public’s burden to search for and obtain 
copies of documents incorporated by reference which 
may not be readily available. Through the Office’s 
incorporation by reference policy, the Office ensures 
that reasonably complete disclosures are published as 
U.S. patents. The following is the manner in which 
the Director has elected to exercise that discretion. 
Section A provides the guidance for incorporation by 
reference in applications which are to issue as U.S. 
patents. Section B provides guidance for incorporation 
by reference in benefit applications; i.e., those 
domestic (35 U.S.C. 120) or foreign (35 U.S.C. 
119(a)) applications relied on to establish an earlier 
effective filing date. See MPEP § 2181 for the impact 
of incorporation by reference on the determination of 
whether applicant has complied with the requirements 
of 35 U.S.C. 112, second paragraph when 35 U.S.C. 
112, sixth paragraph is invoked.

A.Review of Applications Which Are To Issue as 
Patents.

An application as filed must be complete in itself in 
order to comply with 35 U.S.C. 112. Material nevertheless 
may be incorporated by reference, Ex parte 
Schwarze, 151 USPQ 426 (Bd. App. 1966). An application 
for a patent when filed may incorporate “essential 
material” by reference to (1) a U.S. patent, or
(2) a U.S. patent application publication, which 
patent or patent application publication does not itself 
incorporate such essential material by reference. See 
37 CFR 1.57(c). Prior to October 21, 2004, Office 
policy also permitted incorporation by reference to a 
pending U.S. application.

“Essential material” is defined in 37 CFR 
1.57(c) as that which is necessary to (1) provide 
a written description of the claimed invention, and of 
the manner and process of making and using it, in 
such full, clear, concise, and exact terms as to enable 
any person skilled in the art to which it pertains, or 
with which it is most nearly connected, to make and 
use the same, and set forth the best mode contemplated 
by the inventor of carrying out the invention as 
required by the first paragraph of 35 U.S.C. 112, (2) 
describe the claimed invention in terms that particularly 
point out and distinctly claim the invention as 
required by the second paragraph of 35 U.S.C. 112, or 
(3) describe the structure, material, or acts that correspond 
to a claimed means or step for performing a 
specified function as required by the sixth paragraph 
of 35 U.S.C. 112. In any application that is to issue as 
a U.S. patent, essential material may only be incorporated 
by reference to a U.S. patent or patent application 
publication. The practice of permitting 
incorporation by reference of material from unpublished 
applications in which the issue fee was paid 
was discontinued by rule on October 21, 2004. 

Other material (“nonessential subject matter”)
may be incorporated by reference to (1) patents or 
applications published by the United States or foreign 
countries or regional patent offices, (2) prior and 
concurrently filed, commonly owned U.S. applications, 
or (3) non-patent publications . Nonessential 
subject matter is subject matter referred to for purposes 
of indicating the background of the invention or 
illustrating the state of the art.

An incorporation by reference by hyperlink or other 
form of browser executable code is not permitted. See 
37 CFR 1.57(d) and MPEP § 608.01.

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). 37 CFR 1.57(b)(1) limits a 
proper incorporation by reference (except as provided 
in 37 CFR 1.57(a)) to instances only where the perfecting 
words “incorporated by reference” or the root 
of the words “incorporate” (e.g., incorporating, incorporated) 
and “reference” (e.g., referencing) appear. 
The requirement for specific root words will bring 
greater clarity to the record and provide a bright line 
test as to where something is being referred to is an 
incorporation by reference. The Office intends to treat 
references to documents that do not meet this “bright 
line” test as noncompliant incorporations by reference 
and may require correction pursuant to 37 CFR 
1.57(g). If a reference to a document does not clearly 
indicate an intended incorporation by reference, 
examination will proceed as if no incorporation by 
reference statement has been made and the Office will 
not expend resources trying to determine if an incorporation 
by reference was intended. In addition to 
other requirements for an application, the referencing 
application must include an identification of the 
referenced patent, application, or publication. See 37 
CFR 1.57(b)(2) Particular attention should be 
directed to specific portions of the referenced document 
where the subject matter being incorporated may 
be found. Guidelines for situations where applicant is 
permitted to fill in a number for Application No. 
__________ left blank in the application as filed can 
be found in In re Fouche, 439 F.2d 1237, 169 USPQ 
429 (CCPA 1971) (Abandoned applications less than 
20 years old can be incorporated by reference to the 
same extent as copending applications; both types are 
open to the public upon the referencing application 
issuing as a patent. See 37 CFR 1.14(a)(i)(iv) and (vi) 
and MPEP § 103).

1.Complete Disclosure Filed

If an application is filed with a complete disclosure, 
essential material may be canceled by amendment and 
may be substituted by reference to a U.S. patent or 
a U.S. patent application publication. The 
amendment must be accompanied by a statement
signed by the applicant, or a practitioner representing 
the applicant, stating that the material canceled from 
the application is the same material that has been 
incorporated by reference and no new matter has 
been included (see 37 CFR 1.57(f). The same procedure 
is available for nonessential material.

If an application as filed incorporates  material by 
reference , a copy of the incorporated by reference 
material may be required to be submitted to the Office 
even if the material is properly incorporated by reference. 
The examiner may require a copy of the incorporated 
material to review and to understand what is 
being incorporated or to put the description of the 
material in its proper context. Another instance where 
a copy of the incorporated material may be required is 
where the material is being inserted by amendment 
into the body of the application to replace an improper 
incorporation by reference statement so that the 
Office can determine that the material being added by 
amendment in lieu of the incorporation is the same 
material as was attempted to be incorporated. If the 
Office requires the applicant to supply a copy of the 
material incorporated by reference, the material must 
be accompanied by a statement that the copy supplied 
consists of the same material incorporated by reference 
in the referencing application. See 37 CFR 
1.57(e).

2.Improper Incorporation

37 CFR 1.57(f) addresses corrections of incorporation 
by reference by inserting the material previously 
incorporated by reference. A noncompliant 
incorporation by reference statement may be corrected 
by an amendment. 37 CFR 1.57(f). However, 
the amendment must not include new matter. Incorporating 
by reference material that was not incorporated 
by reference on filing of an application may introduce 
new matter. An incorporation by reference of essential 
material to an unpublished U.S. patent application, a 
foreign application or patent, or to a publication is 
improper under 37 CFR 1.57(c). The improper incorporation by reference is not effective to incorporate 
the material unless corrected by the applicant (37 
CFR 1.57(g)). Any underlying objection or rejection 
(e.g., under 35 U.S.C. 112) should be made by the 
examiner until applicant corrects the improper incorporation 
by reference by submitting an amendment to 
amend the specification or drawings to include the 
material incorporated by reference. A statement that 
the material being inserted is the material previously 
incorporated by reference and that the amendment 
contains no new matter is also required. 37 CFR 
1.57(f). See also In re Hawkins, 486 F.2d 569, 179 
USPQ 157 (CCPA 1973); In re Hawkins, 486 F.2d 
579, 179 USPQ 163 (CCPA 1973); In re Hawkins, 
486 F.2d 577, 179 USPQ 167 (CCPA 1973). Improper 
incorporation by reference statements and late corrections 
thereof require expenditure of unnecessary 
examination resources and slow the prosecution process. 
Applicants know (or should know) whether they 
want material incorporated by reference, and must 
timely correct any incorporation by reference errors. 
Correction must be done within the time period set 
forth in 37 CFR 1.57(g).

An incorporation by reference that does not comply 
with 37 CFR 1.57(b), (c), or (d) is not effective to 
incorporate such material unless corrected within any 
time period set by the Office (should the noncompliant 
incorporation by reference be first noticed by the 
Office and applicant informed thereof), but in no case 
later than the close of prosecution as defined by 37 
CFR 1.114(b) (should applicant be the first to notice 
the noncompliant incorporation by reference and the 
Office informed thereof), or abandonment of the 
application, whichever occurs earlier. The phrase “or 
abandonment of the application” is included in 37 
CFR 1.57(g) to address the situations where an application 
is abandoned prior to the close of prosecution, 
e.g., the situation where an application is abandoned 
after a non-final Office action.

37 CFR 1.57(g)(1) authorizes the correction of noncompliant 
incorporation by reference statements that 
do not use the root of the words “incorporate” and 
“reference” in the incorporation by reference statement. 
This correction cannot be made when the material 
was merely referred to and there was no clear 
specific intent to incorporate it by reference.

37 CFR 1.57(g)(2) states that a citation of a document 
can be corrected where the document is sufficiently 
described to uniquely identify the document. 
Correction of a citation for a document that cannot be 
identified as the incorporated document may be new 
matter and is not authorized by 37 CFR 1.57(g)(2). 
An example would be where applicant intended to 
incorporate a particular journal article but supplied the 
citation information for a completely unrelated book 
by a different author, and there is no other information 
to identify the correct journal article. Since it cannot 
be determined from the citation originally supplied 
what article was intended to be incorporated, it would 
be improper (e.g., new matter) to replace the original 
incorporation by reference with the intended incorporation 
by reference. A citation of a patent application 
by attorney docket number, inventor name, filing date 
and title of invention may sufficiently describe the 
document, but even then correction should be made to 
specify the application number.

A petition under 37 CFR 1.183 to suspend the time 
period requirement set forth in 37 CFR 1.57(g) will 
not be appropriate. After the application has been 
abandoned, applicant must file a petition to revive 
under 37 CFR 1.137 for the purpose of correcting the 
incorporation by reference. After the application has 
issued as a patent, applicant may correct the patent by 
filing a reissue application. Correcting an improper 
incorporation by reference with a certificate of correction 
is not an appropriate means of correction because 
it may alter the scope of the claims. The scope of the 
claims may be altered because 37 CFR 1.57(g) provides 
that an incorporation by reference that does not 
comply with paragraph (b), (c), or (d) is not an effective 
incorporation. For example, an equivalent means 
omitted from a patent disclosure by an ineffective 
incorporation by reference would be outside the scope 
of the patented claims. Hence, a correction of an 
incorporation by reference pursuant to 37 CFR 1.57may alter the scope of the claims by adding the omitted 
equivalent means. Changes involving the scope of 
the claims should be done via the reissue process. 
Additionally, the availability of the reissue process for 
corrections would make a successful showing 
required under 37 CFR 1.183 unlikely. The following 
examples show when an improper incorporation by 
reference is required to be corrected:

Example 1:

Upon review of the specification, the examiner 
noticed that the specification included an incorporation 
by reference statement incorporating essential 
material disclosed in a foreign patent. In a non-
final Office action, the examiner required the 
applicant to amend the specification to include the 
essential material.

In reply to the non-final Office action, applicant 
must correct the improper incorporation by reference 
by filing an amendment to add the essential 
material disclosed in the foreign patent and a statement 
in compliance with 37 CFR1.57(f) within the 
time period for reply set forth in the non-final 
Office action.

Example 2:

Upon review of the specification, the examiner 
determined that the subject matter incorporated by 
reference from a foreign patent was “nonessential 
material” and therefore, did not object to the incorporation 
by reference. In reply to a non-final 
Office action, applicant filed an amendment to the 
claims to add a new limitation that was supported 
only by the foreign patent. The amendment filed 
by the applicant caused the examiner to re-determine 
that the incorporated subject matter was 
“essential material” under 37 CFR 1.57(c). The 
examiner rejected the claims that include the new 
limitation under 35 U.S.C. 112, first paragraph, in 
a final Office action.

Since the rejection under 35 U.S.C. 112, first paragraph 
was necessitated by the applicant’s amendment, 
the finality of the Office action is proper. If 
the applicant wishes to overcome the rejection 
under 35 U.S.C. 112, first paragraph by filing an 
amendment under 37 CFR 1.57(f) to add the subject 
material disclosed in the foreign patent into 
the specification, applicant may file the amendment 
as an after final amendment in compliance 
with 37 CFR 1.116. Alternatively, applicant may 
file an RCE under 37 CFR 1.114 accompanied by 
the appropriate fee, and an amendment per 37 CFR 
1.57(f) within the time period for reply set forth in 
the final Office action.

The filing date of any application wherein essential 
material is improperly incorporated by reference will 
not be affected by applicant’s correction where (A) 
there is a clear intent to incorporate by reference the 
intended material and the correction is to add the root 
words of “incorporate” and “reference,” (B) the incorporated 
document can be uniquely identified and the 
correction is to clarify the document’s identification, 
and (C) where the correction is to insert the material 
from the reference where incorporation is to an 
unpublished U.S. patent application, foreign application 
or patent, or to a publication.

Reliance on a commonly assigned , prior filed or 
concurrently filed copending application by a different 
inventor may ordinarily be made for the purpose 
of completing the disclosure provided the incorporated 
material is directed to nonessential material. See 
37 CFR 1.57(d). See In re Fried, 329 F.2d 323, 141 
USPQ 27 (CCPA 1964), and General Electric Co. v. 
Brenner, 407 F.2d 1258, 159 USPQ 335 (D.C. Cir. 
1968).

Since a disclosure must be complete as of the filing 
date, subsequent publications or subsequently filed 
applications cannot be relied on to establish a constructive 
reduction to practice or an enabling disclosure 
as of the filing date. White Consol. Indus., Inc. v. 
Vega Servo-Control, Inc., 713 F.2d 788, 218 USPQ 
961 (Fed. Cir. 1983); In re Scarbrough, 500 F.2d 560, 
182 USPQ 298 (CCPA 1974); In re Glass, 492 F.2d 
1228, 181 USPQ 31 (CCPA 1974).

B.Review of Applications Which Are Relied on 
To Establish an Earlier Effective Filing Date.

The limitations on the material which may be incorporated 
by reference in U.S. patent applications which 
are to issue as U.S. patents do not apply to applications 
relied on only to establish an earlier effective filing 
date under 35 U.S.C. 119 or 35 U.S.C. 120. 
Neither 35 U.S.C. 119(a) nor 35 U.S.C. 120 places 
any restrictions or limitations as to how the claimed 
invention must be disclosed in the earlier application 
to comply with 35 U.S.C. 112, first paragraph. 
Accordingly, an application is entitled to rely upon the 
filing date of an earlier application, even if the earlier 
application itself incorporates essential material by 
reference to another document. See Ex parte Maziere, 
27 
USPQ2d 1705, 1706-07 (Bd. Pat. App. & Inter. 
1993).

The reason for incorporation by reference practice 
with respect to applications which are to issue as U.S. 
patents is to provide the public with a patent disclosure 
which minimizes the public’s burden to search 
for and obtain copies of documents incorporated by 
reference which may not be readily available. 
Through the Office’s incorporation by reference policy, 
the Office ensures that reasonably complete disclosures 
are published as U.S. patents. The same 
policy concern does not apply where the sole purpose 
for which an applicant relies on an earlier U.S. or foreign 
application is to establish an earlier filing date. 
Incorporation by reference in the earlier application of 
(1) patents or applications published by foreign countries 
or regional patent offices, (2) nonpatent publications, 
(3) a U.S. patent or application which itself 
incorporates “essential material” by reference, or (4) a 
foreign application, is not critical in the case of a 
“benefit” application.

When an applicant, or a patent owner in a reexamination 
or interference, claims the benefit of the filing 
date of an earlier application which incorporates 
material by reference, the applicant or patent owner 
may be required to supply copies of the material 
incorporated by reference. For example, an applicant 
may claim the benefit of the filing date of a foreign 
application which itself incorporates by reference 
another earlier filed foreign application. If necessary, 
due to an intervening reference, applicant should be 
required to supply a copy of the earlier filed foreign 
application, along with an English language translation. 
A review can then be made of the foreign application 
and all material incorporated by reference to 
determine whether the foreign application discloses 
the invention sought to be patented in the manner 
required by the first paragraph of 
35 U.S.C. 112 so 
that benefit may be accorded. In re Gosteli, 872 F.2d 
1008, 10 USPQ2d 1614 (Fed. Cir. 1989).

As a safeguard against the omission of a portion of 
a prior application for which priority is claimed under 
35 U.S.C. 119(a)-(d) or (f), or for which benefit is 
claimed under 35 U.S.C. 119(e) or 120, applicant may 
include a statement at the time of filing of the later 
application incorporating by reference the prior application. 
See MPEP § 201.06(c) and § 201.11 where 
domestic benefit is claimed. See MPEP § 201.13
where foreign priority is claimed. See MPEP § 
201.17 regarding 37 CFR 1.57(a) for applications 
filed on or after September 21, 2004. The inclusion 
of such an incorporation by reference statement in the 
later-filed application will permit applicant to include 
subject matter from the prior application into the later-
filed application without the subject matter being considered 
as new matter. For the incorporation by reference 
to be effective as a proper safeguard, the 
incorporation by reference statement must be filed at 
the time of filing of the later-filed application. 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).

II.SIMULATED OR PREDICTED TEST RESULTS 
OR PROPHETIC EXAMPLES

Simulated or predicted test results and prophetical 
examples (paper examples) are permitted in patent 
applications. Working examples correspond to work 
actually performed and may describe tests which have 
actually been conducted and results that were 
achieved. Paper examples describe the manner and 
process of making an embodiment of the invention 
which has not actually been conducted. Paper examples 
should not be represented as work actually done. 
No results should be represented as actual results 
unless they have actually been achieved. Paper examples 
should not be described using the past tense. 
Hoffman-La Roche, Inc. v. Promega Corp., 323 F.3d 
1354, 1367, 66 USPQ2d 1385, 1394 (Fed. Cir. 2003).

For problems arising from the designation of materials 
by trademarks and trade names, see MPEP § 
608.01(v).

====608.01 (q)Substitute or Rewritten Specification====

37 CFR 1.125. Substitute specification.

(a)If the number or nature of the amendments or the legibility 
of the application papers renders it difficult to consider the 
application, or to arrange the papers for printing or copying, the 
Office may require the entire specification, including the claims, 
or any part thereof, be rewritten.

(b)Subject to § 1.312, a substitute specification, excluding 
the claims, may be filed at any point up to payment of the issue 
fee if it is accompanied by a statement that the substitute specification 
includes no new matter. 

(c)A substitute specification submitted under this section 
must be submitted with markings showing all the changes relative 
to the immediate prior version of the specification of record. The 
text of any added subject matter must be shown by underlining the 
added text. The text of any deleted matter must be shown by 
strike-through except that double brackets placed before and after 
the deleted characters may be used to show deletion of five or 
fewer consecutive characters. The text of any deleted subject matter 
must be shown by being placed within double brackets if 
strike-through cannot be easily perceived. An accompanying 
clean version (without markings) must also be supplied. Numbering 
the paragraphs of the specification of record is not considered 
a change that must be shown pursuant to this paragraph.

(d)A substitute specification under this section is not permitted 
in a reissue application or in a reexamination proceeding.

The specification is sometimes in such faulty 
English that a new specification is necessary; in such 
instances, a new specification should be required.

Form paragraph 6.28 may be used where the specification 
is in faulty English.



¶ 6.28 Idiomatic English

A substitute specification in proper idiomatic English and in 
compliance with 37 CFR 1.52(a) and (b) is required. The substitute 
specification filed must be accompanied by a statement that it 
contains no new matter. 

37 CFR 1.125(a) applies to a substitute specification 
required by the Office. If the number or nature of 
the amendments or the legibility of the application 
papers renders it difficult to consider the application, 
or to arrange the papers for printing or copying, the 
Office may require the entire specification, including 
the claims, or any part thereof be rewritten.

Form paragraph 6.28.01 may be used where the 
examiner, for reasons other than faulty English, 
requires a substitute specification.



¶ 6.28.01 Substitute Specification Required by Examiner

A substitute specification [1] the claims is required pursuant to 
37 CFR 1.125(a) because [2].

A substitute specification must not contain new matter. The 
substitute specification must be submitted with markings showing 
all the changes relative to the immediate prior version of the specification 
of record. The text of any added subject matter must be 
shown by underlining the added text. The text of any deleted matter 
must be shown by strikethrough except that double brackets 
placed before and after the deleted characters may be used to 
show deletion of five or fewer consecutive characters. The text of 
any deleted subject matter must be shown by being placed within 
double brackets if strikethrough cannot be easily perceived. An 
accompanying clean version (without markings) and a statement 






that the substitute specification contains no new matter must also 
be supplied. Numbering the paragraphs of the specification of 
record is not considered a change that must be shown. 

Examiner Note:

1.In bracket 1, insert either --excluding-- or --including--. 

2.In bracket 2, insert clear and concise examples of why a new 
specification is required.

3.A new specification is required if the number or nature of the 
amendments render it difficult to consider the application or to 
arrange the papers for printing or copying, 37 CFR 1.125.

4.See also form paragraph 13.01 for partial rewritten specification.




37 CFR 1.125(b) applies to a substitute specification 
voluntarily filed by the applicant. Subject to the 
provisions of 37 CFR 1.312, a substitute specification, 
excluding claims, may be voluntarily filed by the 
applicant at any point up to the payment of the issue 
fee provided it is accompanied by a statement that the 
substitute specification includes no new matter. The 
Office will accept a substitute specification voluntarily 
filed by the applicant if the requirements of 37 
CFR 1.125(b) are satisfied.

37 CFR 1.125(c) requires a substitute specification 
filed under 37 CFR 1.125(a) or (b) be submitted in 
clean form without markings. A marked-up copy of 
the substitute specification showing all the changes 
relative to the immediate prior version of the specification 
of record must also be submitted. The text of 
any added subject matter must be shown by underlining 
the added text. The text of any deleted matter must 
be shown by strike-through except that double brackets 
placed before and after the deleted characters may 
be used to show deletion of five of fewer consecutive 
characters. The text of any deleted subject matter 
must be shown by being placed within double brackets 
if strike-through cannot be easily perceived. Numbering 
the paragraphs of the specification of record is 
not considered a change that must be shown under 37 
CFR 1.125(c) The paragraphs of any substitute specification, 
other than the claims, should be individually 
numbered in Arabic numerals (for example [0001]) so 
that any amendment to the specification may be made 
by replacement paragraph in accordance with 37 CFR 
1.121(b)(1). 

A substitute specification filed under 37 CFR 
1.125(b) must be accompanied by a statement indicating 
that no new matter was included. There is no obligation 
on the examiner to make a detailed comparison 
between the old and the new specifications for determining 
whether or not new matter has been added. If, 
however, an examiner becomes aware that new matter 
is present, objection thereto should be made.

The filing of a substitute specification rather than 
amending the original application has the advantage 
for applicants of eliminating the need to prepare an 
amendment of the specification. If word processing 
equipment is used by applicants, substitute specifications 
can be easily prepared. The Office receives the 
advantage of saving the time needed to enter amendments 
in the specification and a reduction in the number 
of printing errors. A substitute specification is not 
permitted in a reissue application or in a reexamination 
proceeding. 37 CFR 1.125(d).

A substitute specification which complies with 
37 
CFR 1.125 should normally be entered. The examiner 
should write “Enter” or “OK to Enter” and his or 
her initials in ink in the left margin of the first page of 
the substitute specification. A substitute specification 
which is denied entry should be so marked. 

Form paragraph 6.28.02 may be used to notify 
applicant that a substitute specification submitted 
under 37 CFR 1.125(b) has not been entered. For 
Image File Wrapper (IFW) processing, see IFW Manual.


¶ 6.28.02 Substitute Specification Filed Under 37 CFR 
1.125(b) and (c) Not Entered.

The substitute specification filed [1] has not been entered 
because it does not conform to 37 CFR 1.125(b) and (c) because: 
[2]

Examiner Note:

1.In bracket 2, insert statement of why the substitute specification 
is improper, for example:

-- the statement as to a lack of new matter under 37 CFR 1.125(b) 
is missing--,

-- a marked-up copy of the substitute specification has not been 
supplied (in addition to the clean copy)--;

-- a clean copy of the substitute specification has not been supplied 
(in addition to the marked-up copy)--; or,

-- the substitute specification has been filed:

- in a reissue application or in a reexamination proceeding, 37 
CFR 1.125(d)-, or

- after payment of the issue fee-, or

- containing claims (to be amended)- --. 

2.A substitute specification filed after final action or appeal is 
governed by 37 CFR 1.116. A substitute specification filed after 
the mailing of a notice of allowance is governed by 37 CFR 1.312.






See MPEP § 714.20 regarding entry of amendments 
which include an unacceptable substitute specification.


For new matter in amendment, see MPEP § 608.04.

For application prepared for issue, see MPEP 
§

1302.02.

====608.01(r)Derogatory Remarks About====
Prior Art in Specification

The applicant may refer to the general state of the 
art and the advance thereover made by his or her 
invention, but he or she is not permitted to make 
derogatory remarks concerning the inventions of others. 
Derogatory remarks are statements disparaging 
the products or processes of any particular person 
other than the applicant, or statements as to the merits 
or validity of applications or patents of another person. 
Mere comparisons with the prior art are not considered 
to be disparaging, per se.

====608.01(s)Restoration of Canceled Matter[R-5]====

Canceled text in the specification can be reinstated 
only by a subsequent amendment presenting the previously 
canceled matter as a new insertion. 37 CFR 
1.121(b)(4). A claim canceled by amendment (deleted 
in its entirety) may be reinstated only by a subsequent 
amendment presenting the claim as a new claim with 
a new claim number. 37 CFR 1.121(c)(5). See MPEP 
§ 714.

====608.01(t)Use in Subsequent Application====

A reservation for a future application of subject 
matter disclosed but not claimed in a pending application 
will not be permitted in the pending application. 
37 CFR 1.79; MPEP § 608.01(e).

No part of a specification can normally be transferred 
to another application. Drawings may be transferred 
to another application only upon the granting of 
a petition filed under the provisions of 37 CFR 1.182. 
See MPEP § 608.02(i).

====608.01(u)Use of Formerly Filed Incomplete====
Application [R-3]

Parts of an incomplete application which have been 
retained by the Office may be used as part of a complete 
application if the missing parts are later supplied. 
See MPEP § 506.

====608.01(v)Trademarks and Names Used in Trade ====

The expressions “trademarks” and “names used in 
trade” as used below have the following meanings:

Trademark: a word, letter, symbol, or device 
adopted by one manufacturer or merchant and used to 
identify and distinguish his or her product from those 
of others. It is a proprietary word, letter, symbol, or 
device pointing distinctly to the product of one producer.

Names Used in Trade: a nonproprietary name by 
which an article or product is known and called 
among traders or workers in the art, although it may 
not be so known by the public, generally. Names used 
in trade do not point to the product of one producer, 
but they identify a single article or product irrespective 
of producer.

Names used in trade are permissible in patent applications if:

(A) Their meanings are established by an accompanying 
definition which is sufficiently precise and 
definite to be made a part of a claim, or

(B) In this country, their meanings are well-
known and satisfactorily defined in the literature.

Condition (A) or (B) must be met at the time of filing of the complete application.

======I. TRADEMARKS======

The relationship between a trademark and the product 
it identifies is sometimes indefinite, uncertain, and 
arbitrary. The formula or characteristics of the product 
may change from time to time and yet it may continue 
to be sold under the same trademark. In patent specifications, 
every element or ingredient of the product 
should be set forth in positive, exact, intelligible language, 
so that there will be no uncertainty as to what 
is meant. Arbitrary trademarks which are liable to 
mean different things at the pleasure of manufacturers 
do not constitute such language. Ex Parte Kattwinkle,
12 USPQ 11 (Bd. App. 1931).

However, if the product to which the trademark 
refers is set forth in such language that its identity 
is clear, the examiners are authorized to permit the use of the trademark if it is distinguished from common 
descriptive nouns by capitalization. If the trademark has a fixed and definite meaning, it constitutes 
sufficient identification unless some physical or chemical characteristic of the article or material is 
involved in the invention. In that event, as also in 
those cases where the trademark has no fixed and definite 
meaning, identification by scientific or other 
explanatory language is necessary. In re Gebauer-
Fuelnegg, 121 F.2d 505, 50 USPQ 125 (CCPA 1941).

The matter of sufficiency of disclosure must be 
decided on an individual case-by-case basis. In re 
Metcalfe, 410 F.2d 1378, 161 USPQ 789 (CCPA 1969).

Where the identification of a trademark is introduced 
by amendment, it must be restricted to the characteristics 
of the product known at the time the 
application was filed to avoid any question of new 
matter.

If proper identification of the product sold under a 
trademark, or a product referred to only by a name 
used in trade, is omitted from the specification and 
such identification is deemed necessary under the 
principles set forth above, the examiner should hold 
the disclosure insufficient and reject on the ground of 
insufficient disclosure any claims based on the identification 
of the product merely by trademark or by the 
name used in trade. If the product cannot be otherwise 
defined, an amendment defining the process of its 
manufacture may be permitted. Such amendments 
must be supported by satisfactory showings establishing 
that the specific nature or process of manufacture 
of the product as set forth in the amendment was 
known at the time of filing of the application.

Although the use of trademarks having definite 
meanings is permissible in patent applications, the 
proprietary nature of the marks should be respected. 
Trademarks should be identified by capitalizing each 
letter of the mark (in the case of word or letter marks) 
or otherwise indicating the description of the mark (in 
the case of marks in the form of a symbol or device or 
other nontextual form). Every effort should be made 
to prevent their use in any manner which might 
adversely affect their validity as trademarks.

Form paragraph 6.20 may be used.

The examiner should not permit the use of language 
such as “the product X (a descriptive name) commonly 
known as Y (trademark)” since such language 
does not bring out the fact that the latter is a trademark. 
Language such as “the product X (a descriptive 
name) sold under the trademark Y” is permissible.

The use of a trademark in the title of an application 
should be avoided as well as the use of a trademark 
coupled with the word “type”, e.g., “Band-Aid type 
bandage.” 

In the event that the proprietary trademark is a 
“symbol or device” depicted in a drawing, either the 
brief description of the drawing or the detailed 
description of the drawing should specify that the 
“symbol or device” is a registered trademark of Company 
X.

The owner of a trademark may be identified in the 
specification.

Technology Center Directors should reply to all 
trademark misuse complaint letters and forward a 
copy to the editor of this manual. Where a letter 
demonstrates a trademark misuse in a patent application 
publication, the Office should, where the application 
is still pending, ensure that the trademark is 
replaced by appropriate generic terminology.

See Appendix I for a partial listing of trademarks 
and the particular goods to which they apply.

======II. INCLUSION OF COPYRIGHT OR MASK WORK NOTICE IN PATENTS======

{{Statute|37 CFR 1.71. Detailed description and specification of the invention}}
{{Ellipsis}}
(d) A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For 
notices in drawings, see § 1.84(s). The content of the notice must 
be limited to only those elements provided for by law. For example, 
“©1983 John Doe” (17 U.S.C. 401) and “M John Doe” (17 
U.S.C. 909) would be properly limited and, under current statutes, 
legally sufficient notices of copyright and mask work, respectively. 
Inclusion of a copyright or mask work notice will be permitted 
only if the authorization language set forth in paragraph (e) 
of this section is included at the beginning (preferably as the first 
paragraph) of the specification.

(e) The authorization shall read as follows:

{{tab1}}A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all (copyright or mask work) rights whatsoever.</p>
|}


{{Statute|37 CFR 1.84. Standards for drawings}}
(s) Copyright or Mask Work Notice. A copyright or mask 
work notice may appear in the drawing, but must be placed within 
the sight of the drawing immediately below the figure representing 
the copyright or mask work material and be limited to letters 
having a print size of.32 cm. to.64 cm. (1/8 to 1/4 inches) high. 
The content of the notice must be limited to only those elements 
provided for by law. For example, “ ©1983 John Doe” (17 U.S.C. 
401) and “M John Doe” (17 U.S.C. 909) would be properly 
limited and, under current statutes, legally sufficient notices of 
copyright and mask work, respectively. Inclusion of a copyright or 
mask work notice will be permitted only if the authorization language 
set forth in § 1.71(e) is included at the beginning (preferably 
as the first paragraph) of the specification.
|}


The U.S. Patent and Trademark Office will permit 
the inclusion of a copyright or mask work notice in a 
design or utility patent application, and thereby any 
patent issuing therefrom, which discloses material on 
which copyright or mask work protection has previously 
been established, under the following conditions:

{{tab1}}(A) The copyright or mask work notice must be placed adjacent to the copyright or mask work material. Therefore, the notice may appear at any appropriate portion of the patent application disclosure, including the drawing. However, if appearing in the drawing, the notice must comply with 37 CFR 1.84(s). If placed on a drawing in conformance with these provisions, the notice will not be objected to as extraneous matter under 37 CFR 1.84.</p>

{{tab1}}(B) The content of the notice must be limited to only those elements required by law. For example, “©1983 John Doe”(17 U.S.C. 401) and “M John Doe” (17 U.S.C. 909) would be properly limited, and under current statutes, legally sufficient notices of copyright and mask work respectively.</p>

{{tab1}}(C) Inclusion of a copyright or mask work notice will be permitted only if the following authorization in 37 CFR 1.71(e) is included at the beginning (preferably as the first paragraph) of the specification to be printed for the patent:</p>

{{tab2}}A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent disclosure, as it appears in the Patent and Trademark Office patent files or records, but otherwise reserves all (copyright or mask work) rights whatsoever.</p>

{{tab1}}(D) Inclusion of a copyright or mask work notice after a Notice of Allowance has been mailed will be permitted only if the criteria of 37 CFR 1.312 have been satisfied.</p>

The inclusion of a copyright or mask work notice in 
a design or utility patent application, and thereby any 
patent issuing therefrom, under the conditions set 
forth above will serve to protect the rights of the 
author/inventor, as well as the public, and will serve 
to promote the mission and goals of the U.S. Patent 
and Trademark Office. Therefore, the inclusion of a 
copyright or mask work notice which complies with 
these conditions will be permitted. However, any 
departure from these conditions may result in a 
refusal to permit the desired inclusion. If the authorization 
required under condition (C) above does not 
include the specific language “(t)he (copyright or 
mask work) owner has no objection to the facsimile 
reproduction by anyone of the patent document or the 
patent disclosure, as it appears in the Patent and 
Trademark Office patent files or records,...” the notice 
will be objected to as improper by the examiner of the 
application. If the examiner maintains the objection 
upon reconsideration, a petition may be filed in accordance 
with 37 CFR 1.181.

===608.02 Drawing===

{{Statute|35 U.S.C. 113. Drawings.}}
The applicant shall furnish a drawing where necessary for the 
understanding of the subject matter to be patented. When the 
nature of such subject matter admits of illustration by a drawing 
and the applicant has not furnished such a drawing, the Commissioner 
may require its submission within a time period of not less 
than two months from the sending of a notice thereof. Drawings 
submitted after the filing date of the application may not be used 
(i) to overcome any insufficiency of the specification due to lack 
of an enabling disclosure or otherwise inadequate disclosure 
therein, or (ii) to supplement the original disclosure thereof for the 
purpose of interpretation of the scope of any claim.
|}


{{Statute|37 CFR 1.81. Drawings required in patent application.}}
(a) The applicant for a patent is required to furnish a drawing 
of his or her invention where necessary for the understanding 
of the subject matter sought to be patented; this drawing, or a high 
quality copy thereof, must be filed with the application. Since corrections 
are the responsibility of the applicant, the original drawing(
s) should be retained by the applicant for any necessary future 
correction.

(b) Drawings may include illustrations which facilitate an 
understanding of the invention (for example, flow sheets in cases 
of processes, and diagrammatic views).

(c) Whenever the nature of the subject matter sought to be 
patented admits of illustration by a drawing without its being necessary 
for the understanding of the subject matter and the applicant 
has not furnished such a drawing, the examiner will require 
its submission within a time period of not less than two months 
from the date of the sending of a notice thereof.

(d) Drawings submitted after the filing date of the application 
may not be used to overcome any insufficiency of the specification 
due to lack of an enabling disclosure or otherwise 
inadequate disclosure therein, or to supplement the original disclosure 
thereof for the purpose of interpretation of the scope of 
any claim.
|}


======I. DRAWING REQUIREMENTS======

The first sentence of 35 U.S.C 113 requires a 
drawing 
to be submitted upon filing where such drawing 
is necessary for the understanding of the invention. 
In this situation, the lack of a drawing renders 
the application incomplete and, as such, the application 
cannot be given a filing date until the drawing is 
received. The second sentence of 35 U.S.C. 113addresses the situation wherein a drawing is not necessary 
for the understanding of the invention, but the 
subject matter sought to be patented admits of illustration 
and no drawing was submitted on filing. The lack 
of a drawing in this situation does not render the 
application incomplete but rather is treated as an 
informality. The examiner should require such drawings 
in almost all such instances. Such drawings could 
be required during the initial processing of the application 
but do not have to be furnished at the time the 
application is filed. The applicant is given at least 
2 months from the date of the letter requiring drawings 
to submit the drawing(s).

If the specification includes a sequence listing or a 
table, such a sequence listing or table is not permitted 
to be reprinted in the drawings. 37 CFR 1.83(a) and 
1.58(a). If a sequence listing as shown in the drawings 
has more information than is contained in the specification, 
the sequence listing could be included in the 
specification and the drawings. Applications filed 
under 35 U.S.C. 371 are excluded from the prohibition 
from having the same tables and sequence listings 
in both the description portion of the 
specification and drawings.

======II.RECEIPT OF DRAWING AFTER THE FILING DATE======

If the examiner discovers new matter in a substitute 
or additional drawing, the drawing should not be 
entered. The drawing should be objected to as containing 
new matter. A new drawing without such new 
matter may be required if the examiner determines 
that a drawing is needed under 37 CFR 1.81 or 37 
CFR 1.83. The examiner’s decision would be reviewable 
by filing a petition under 37 CFR 1.181. The 
Technology Center (TC) Director would decide such a 
petition.

======III. HANDLING OF DRAWING REQUIREMENTS UNDER THE FIRST SENTENCE OF 35 U.S.C 113======

The Office of Initial Patent Examination (OIPE) 
will make the initial decision in all new applications 
as to whether a drawing is “necessary” under the first 
sentence of 35 U.S.C. 113. A drawing will be considered 
necessary under the first sentence of 35 U.S.C. 
113 in all applications where the drawing is referred 
to in the specification and one or more figures have 
been omitted.

The determination under 35 U.S.C. 113 (first sentence) 
as to when a drawing is necessary will be handled 
in OIPE in accordance with the following 
procedure. OIPE will make the initial determination 
as to whether drawings are required for the understanding 
of the subject matter of the invention. When no drawings are included in the application as filed 
and drawings are required, the application is treated as 
incomplete and the applicant is so informed by OIPE. 
A filing date will not be granted and applicant will be 
notified to complete the application (37 CFR 1.53(e)). 
If a drawing is later furnished, a filing date may be 
granted as of the date of receipt of such drawing.

An OIPE formality examiner should not treat an 
application without drawings as incomplete if drawings 
are not required. A drawing is not required for a 
filing date under 35 U.S.C. 111 and 113 if the application 
contains:

(A) at least one process claim including the term 
“process” or “method” in its introductory phrase;

(B) at least one composition claim including the 
term “composition,” “compound,” “mixture” or 
“pharmaceutical” in its introductory phrase;

(C) at least one claim directed to a coated article 
or product or to an article or product made from a particular 
material or composition (i.e., an article of 
known and conventional character (e.g., a table), 
coated with or made of a particular composition (e.g., 
a specified polymer such as polyvinyl-chloride));

(D) at least one claim directed to a laminated article 
or product (i.e., a laminated article of known and 
conventional character (e.g., a table)); or

(E) at least one claim directed to an article, apparatus, 
or system where the sole distinguishing feature 
is the presence of a particular material (e.g., a hydraulic 
system using a particular hydraulic fluid, or a conventional 
packaged suture using a particular material). 

For a more complete explanation about when a 
drawing is required, see MPEP § 601.01(f). For applications 
submitted without all of the drawings 
described in the specification, see MPEP § 601.01(g).

If an examiner determines that a filing date should 
not have been granted in an application because it 
does not contain drawings, the matter should be 
brought to the attention of the supervisory patent 
examiner (SPE) for review. If the SPE decides that 
drawings are required to understand the subject matter 
of the invention, the SPE should return the application 
to OIPE with a typed, signed, and dated memorandum 
requesting cancellation of the filing date and identifying 
the subject matter required to be illustrated.

======IV. HANDLING OF DRAWING REQUIREMENTS UNDER THE SECOND SENTENCE OF 35 U.S.C 113 - ILLUSTRATION SUBSEQUENTLY REQUIRED======

35 U.S.C.113 addresses the situation wherein a 
drawing is not necessary for the understanding of the 
invention, but the subject matter sought to be patented 
admits of illustration by a drawing and the applicant 
has not furnished a drawing. The lack of a drawing in 
this situation does not render the application incomplete 
but rather is treated as an informality. A filing 
date will be accorded with the original presentation of 
the papers, despite the absence of drawings. The 
acceptance of an application without a drawing does 
not preclude the examiner from requiring an illustration 
in the form of a drawing under 37 CFR 1.81(c) or 
37 CFR 1.83(c). In requiring such a drawing, the 
examiner should clearly indicate that the requirement 
is made under 37 CFR 1.81(c) or 37 CFR 1.83(a) and 
be careful not to state that he or she is doing so 
“because it is necessary for the understanding of the 
invention,” as that might give rise to an erroneous 
impression as to the completeness of the application 
as filed. Examiners making such requirements are to 
specifically require, as a part of the applicant’s next 
reply, at least an ink sketch or permanent print of any 
drawing in reply to the requirement, even though no 
allowable subject matter is yet indicated. This will 
afford the examiner an early opportunity to determine 
the sufficiency of the illustration and the absence of 
new matter. See 37 CFR 1.121 and 37 CFR 1.81(d). 

Applicant should also amend the specification 
accordingly to reference to the new illustration at the 
time of submission of the drawing(s). This may obviate 
further correspondence where an amendment 
places the application in condition for allowance. 

======V. DRAWING STANDARDS======

{{Statute|37 CFR 1.84. Standards for drawings.}}
(a) Drawings. There are two acceptable categories for presenting 
drawings in utility and design patent applications.

{{tab1}}(1) Black ink. Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings; or</p>

{{tab1}}(2) Color. On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility or design patent application or the subject matter of a statutory invention registration. The color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent. Color drawings are not permitted in international applications (see PCT Rule 11.13), or in an application, or copy thereof, submitted under the Office electronic filing system. The Office will accept color drawings in utility or design patent applications and statutory invention registrations only after granting a petition filed under this paragraph explaining why the color drawings are necessary. Any such petition must include the following:</p>

{{tab2}}(i) The fee set forth in § 1.17(h);</p>

{{tab2}}(ii) Three (3) sets of color drawings;</p>

{{tab2}}(iii) An amendment to the specification to insert (unless the specification contains or has been previously amended to contain) the following language as the first paragraph of the brief description of the drawings:</p>

{{tab3}}The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.</p>

(b) Photographs.— 

{{tab1}}(1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots (e.g., immunological, western, Southern, and northern), auto- radiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.</p>

{{tab1}}(2) Color photographs. Color photographs will be accepted in utility and design patent applications if the conditions for accepting color drawings and black and white photographs have been satisfied. See paragraphs (a)(2) and (b)(1) of this section.</p>

(c) Identification of drawings. Identifying indicia should be 
provided, and if provided, should include the title of the invention, 
inventor’s name, and application number, or docket number (if 
any) if an application number has not been assigned to the application. 
If this information is provided, it must be placed on the 
front of each sheet within the top margin. Each drawing sheet submitted 
after the filing date of an application must be identified as 
either “Replacement Sheet” or “New Sheet” pursuant to § 
1.121(d). If a marked-up copy of any amended drawing figure 
including annotations indicating the changes made is filed, such 
marked-up copy must be clearly labeled as “Annotated Sheet” 
pursuant to § 1.121(d)(1).

(d) Graphic forms in drawings. Chemical or mathematical 
formulae, tables, and waveforms may be submitted as drawings 
and are subject to the same requirements as drawings. Each chemical 
or mathematical formula must be labeled as a separate figure, 
using brackets when necessary, to show that information is properly 
integrated. Each group of waveforms must be presented as a 
single figure, using a common vertical axis with time extending 
along the horizontal axis. Each individual waveform discussed in 
the specification must be identified with a separate letter designation 
adjacent to the vertical axis.

(e) Type of paper. Drawings submitted to the Office must be 
made on paper which is flexible, strong, white, smooth, non-shiny, 
and durable. All sheets must be reasonably free from cracks, 
creases, and folds. Only one side of the sheet may be used for the 
drawing. Each sheet must be reasonably free from erasures and 
must be free from alterations, overwritings, and interlineations. 
Photographs must be developed on paper meeting the sheet-size 
requirements of paragraph (f) of this section and the margin requirements of paragraph (g) of this section. See paragraph (b) of 
this section for other requirements for photographs.

(f) Size of paper. All drawing sheets in an application must 
be the same size. One of the shorter sides of the sheet is regarded 
as its top. The size of the sheets on which drawings are made must 
be:

{{tab1}}(1) 21.0 cm. by 29.7 cm. (DIN size A4), or</p>

{{tab1}}(2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).</p>

(g) Margins. The sheets must not contain frames around the 
sight (i.e., the usable surface), but should have scan target points 
(i.e., cross-hairs) printed on two cater-corner margin corners. Each 
sheet must include a top margin of at least 2.5 
cm. (1 
inch), a left 
side margin of at 
least 2.5 
cm. (1 
inch), a right side margin of at 
least 1.5 
cm. (5/8 
inch), and a bottom margin of at least 1.0 
cm. 
(3/8 
inch), thereby leaving a sight no greater than 17.0 
cm. by 
26.2 
cm. on 21.0 
cm. by 29.7 
cm. (DIN size A4) drawing sheets, 
and a sight no greater than 17.6 
cm. by 24.4 
cm. (6 15/16 by 9 5/
8 
inches) on 21.6 
cm. by 27.9 
cm. (8 1/2 by 11 
inch) drawing 
sheets.

(h) Views. The drawing must contain as many views as necessary 
to show the invention. The views may be plan, elevation, 
section, or perspective views. Detail views of portions of elements, 
on a larger scale if necessary, may also be used. All views 
of the drawing must be grouped together and arranged on the 
sheet(s) without wasting space, preferably in an upright position, 
clearly separated from one another, and must not be included in 
the sheets containing the specifications, claims, or abstract. Views 
must not be connected by projection lines and must not contain 
center lines. Waveforms of electrical signals may be connected by 
dashed lines to show the relative timing of the waveforms.

{{tab1}}(1) Exploded views. Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.</p>

{{tab1}}(2) Partial views. When necessary, a view of a large machine or device in its entirety may be broken into partial views on a single sheet, or extended over several sheets if there is no loss in facility of understanding the view. Partial views drawn on separate sheets must always be capable of being linked edge to edge so that no partial view contains parts of another partial view. A smaller scale view should be included showing the whole formed by the partial views and indicating the positions of the parts shown. When a portion of a view is enlarged for magnification purposes, the view and the enlarged view must each be labeled as separate views.</p>

{{tab2}}(i) Where views on two or more sheets form, in effect, a single complete view, the views on the several sheets must be so arranged that the complete figure can be assembled without concealing any part of any of the views appearing on the various sheets.</p>

{{tab2}}(ii) A very long view may be divided into several parts placed one above the other on a single sheet. However, the relationship between the different parts must be clear and unambiguous.</p>

{{tab1}}(3) Sectional views. The plane upon which a sectional 
view is taken should be indicated on the view from which the section 
is cut by a broken line. The ends of the broken line should be 
designated by Arabic or Roman numerals corresponding to the 
view number of the sectional view, and should have arrows to 
indicate the direction of sight. Hatching must be used to indicate 
section portions of an object, and must be made by regularly 
spaced oblique parallel lines spaced sufficiently apart to enable 
the lines to be distinguished without difficulty. Hatching should 
not impede the clear reading of the reference characters and lead 
lines. If it is not possible to place reference characters outside the 
hatched area, the hatching may be broken off wherever reference 
characters are inserted. Hatching must be at a substantial angle to 
the surrounding axes or principal lines, preferably 45°. A cross 
section must be set out and drawn to show all of the materials as 
they are shown in the view from which the cross section was 
taken. The parts in cross section must show proper material(s) by 
hatching with regularly spaced parallel oblique strokes, the space 
between strokes being chosen on the basis of the total area to be 
hatched. The various parts of a cross section of the same item 
should be hatched in the same manner and should accurately and 
graphically indicate the nature of the material(s) that is illustrated 
in cross section. The hatching of juxtaposed different elements 
must be angled in a different way. In the case of large areas, hatching 
may be confined to an edging drawn around the entire inside 
of the outline of the area to be hatched. Different types of hatching 
should have different conventional meanings as regards the nature 
of a material seen in cross section.

{{tab1}}(4) Alternate position. A moved position may be shown 
by a broken line superimposed upon a suitable view if this can be 
done without crowding; otherwise, a separate view must be used 
for this purpose.

{{tab1}}(5) Modified forms. Modified forms of construction must 
be shown in separate views.

(i) Arrangement of views. One view must not be placed 
upon another or within the outline of another. All views on the 
same sheet should stand in the same direction and, if possible, 
stand so that they can be read with the sheet held in an upright 
position. If views wider than the width of the sheet are necessary 
for the clearest illustration of the invention, the sheet may be 
turned on its side so that the top of the sheet, with the appropriate 
top margin to be used as the heading space, is on the right-hand 
side. Words must appear in a horizontal, left-to-right fashion when 
the page is either upright or turned so that the top becomes the 
right side, except for graphs utilizing standard scientific convention 
to denote the axis of abscissas (of X) and the axis of ordinates 
(of Y).

(j) Front page view. The drawing must contain as many 
views as necessary to show the invention. One of the views should 
be suitable for inclusion on the front page of the patent application 
publication and patent as the illustration of the invention. Views 
must not be connected by projection lines and must not contain 
center lines. Applicant may suggest a single view (by figure number) 
for inclusion on the front page of the patent application publication 
and patent.

(k) Scale. The scale to which a drawing is made must be 
large enough to show the mechanism without crowding when the 
drawing is reduced in size to two-thirds in reproduction. Indications 
such as “actual size” or “scale 1/2” on the drawings are not permitted since these lose their meaning with reproduction in a 
different format.

(l) Character of lines, numbers, and letters. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.

(m) Shading. The use of shading in views is encouraged if it 
aids in understanding the invention and if it does not reduce legibility. 
Shading is used to indicate the surface or shape of spherical, 
cylindrical, and conical elements of an object. Flat parts may also 
be lightly shaded. Such shading is preferred in the case of parts 
shown in perspective, but not for cross sections. See paragraph 
(h)(3) of this section. Spaced lines for shading are preferred. 
These lines must be thin, as few in number as practicable, and 
they must contrast with the rest of the drawings. As a substitute 
for shading, heavy lines on the shade side of objects can be used 
except where they superimpose on each other or obscure reference 
characters. Light should come from the upper left corner at an 
angle of 45°. Surface delineations should preferably be shown by 
proper shading. Solid black shading areas are not permitted, 
except when used to represent bar graphs or color.

(n) Symbols. Graphical drawing symbols may be used for 
conventional elements when appropriate. The elements for which 
such symbols and labeled representations are used must be adequately 
identified in the specification. Known devices should be 
illustrated by symbols which have a universally recognized conventional 
meaning and are generally accepted in the art. Other 
symbols which are not universally recognized may be used, subject 
to approval by the Office, if they are not likely to be confused 
with existing conventional symbols, and if they are readily identifiable.

(o) Legends. Suitable descriptive legends may be used subject 
to approval by the Office, or may be required by the examiner 
where necessary for understanding of the drawing. They should 
contain as few words as possible.

(p) Numbers, letters, and reference characters.

{{tab1}}(1) Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines, e.g., encircled. They must be oriented in the same direction as the view so as to avoid having to rotate the sheet. Reference characters should be arranged to follow the profile of the object depicted.</p>

{{tab1}}(2) The English alphabet must be used for letters, except where another alphabet is customarily used, such as the Greek alphabet to indicate angles, wavelengths, and mathematical formulas.</p>

{{tab1}}(3) Numbers, letters, and reference characters must measure at least.32 cm. (1/8 inch) in height. They should not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not cross or mingle with the lines. They should not be placed upon hatched or shaded surfaces. When necessary, such as indicating a surface or cross section, a reference character may be underlined and a blank space may be left in the hatching or shading where the character occurs so that it appears distinct.</p>

{{tab1}}(4) The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character, and the same reference character must never be used to designate different parts.</p>

{{tab1}}(5) Reference characters not mentioned in the description shall not appear in the drawings. Reference characters mentioned in the description must appear in the drawings.</p>

(q) Lead lines. Lead lines are those lines between the reference 
characters and the details referred to. Such lines may be 
straight or curved and should be as short as possible. They must 
originate in the immediate proximity of the reference character 
and extend to the feature indicated. Lead lines must not cross each 
other. Lead lines are required for each reference character except 
for those which indicate the surface or cross section on which they 
are placed. Such a reference character must be underlined to make 
it clear that a lead line has not been left out by mistake. Lead lines 
must be executed in the same way as lines in the drawing. See 
paragraph (l) of this section.

(r) Arrows. Arrows may be used at the ends of lines, provided 
that their meaning is clear, as follows:

{{tab1}}(1) On a lead line, a freestanding arrow to indicate the entire section towards which it points;</p>

{{tab1}}(2) On a lead line, an arrow touching a line to indicate the surface shown by the line looking along the direction of the arrow; or</p>

{{tab1}}(3) To show the direction of movement.</p>

(s) Copyright or Mask Work Notice. A copyright or mask work notice may appear in the drawing, but must be placed within the sight of the drawing immediately below the figure representing the copyright or mask work material and be limited to letters having a print size of 32 cm. to 64 cm. (1/8 to 1/4 inches) high. The content of the notice must be limited to only 
those elements provided for by law. For example, “©1983 John 
Doe” (17 U.S.C. 401) and “M John Doe” (17 U.S.C. 909) 
would be properly limited and, under current statutes, legally sufficient 
notices of copyright and mask work, respectively. Inclusion 
of a copyright or mask work notice will be permitted only if 
the authorization language set forth in § 1.71(e) is included at the 
beginning (preferably as the first paragraph) of the specification.

(t) Numbering of sheets of drawings. The sheets of drawings 
should be numbered in consecutive Arabic numerals, starting with 
1, within the sight as defined in paragraph (g) of this section. 
These numbers, if present, must be placed in the middle of the top 
of the sheet, but not in the margin. The numbers can be placed on 
the right-hand side if the drawing extends too close to the middle 
of the top edge of the usable surface. The drawing sheet numbering 
must be clear and larger than the numbers used as reference 
characters to avoid confusion. The number of each sheet should 
be shown by two Arabic numerals placed on either side of an 
oblique line, with the first being the sheet number and the second 
being the total number of sheets of drawings, with no other marking.

(u) Numbering of views.

{{tab1}}(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation “FIG.” Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear.</p>

{{tab1}}(2) Numbers and letters identifying the views must be simple and clear and must not be used in association with brackets, circles, or inverted commas. The view numbers must be larger than the numbers used for reference characters.</p>

(v) Security markings. Authorized security markings may be 
placed on the drawings provided they are outside the sight, preferably 
centered in the top margin.

(w) Corrections. Any corrections on drawings submitted to 
the Office must be durable and permanent.

(x) Holes. No holes should be made by applicant in the 
drawing sheets.

(y) Types of drawings. See § 1.152 for design drawings, 
§ 1.165 for plant drawings, and § 1.173(a)(2) for reissue drawings.
|}


Drawings on paper are acceptable as long as they 
are in compliance with 37 CFR 1.84. Corrections 
thereto must be made in the form of replacement 
sheets labeled, in the header, “Replacement Sheet” 
since the Office does not release drawings for correction. 
See 37 CFR 1.85.

Each drawing sheet submitted after the filing date 
of an application must be identified as either 
“Replacement Sheet” or “New Sheet” so that the 
Office will recognize how to treat such a drawing 
sheet for entry into the application. See 37 CFR 
1.84(c). If a marked-up copy of any amended drawing 
figure, including annotations indicating the changes 
made, is filed, such marked-up copy must be clearly 
labeled as “Annotated Sheet.”

Good quality copies made on office copiers are 
acceptable if the lines are uniformly thick, black, and 
solid. Facsimile copies of drawings are acceptable if 
included with application papers mailed or hand-carried 
to the Office or if submitted at the time of payment 
of the issue fee (see “Payment of the Issue Fee 
and Filing Related Correspondence by Facsimile,” 
1254 O.G. 91 (January 15, 2002)). Applicants should 
ensure that the facsimile transmission process does 
not unreasonably degrade the quality of the drawings.

Drawings are currently accepted in two different 
size formats. It is, however, required that all drawing 
sheets in a particular application be the same size for 
ease of handling and reproduction.

For examples of proper drawings, in addition to 
selected rules of practice related to patent drawings 
and interpretations of those rules, see the “Guide for 
the Preparation of Patent Drawings” which is available 
from the USPTO web site at www.uspto.gov. 

For information regarding certified copies of an 
application-as-filed which does not meet the sheet 
size/margin and 
quality requirements of 37 CFR 1.52, 
1.84(f), and 1.84(g), see MPEP § 608.01.

For design patent drawings, 37 CFR 1.152, see 
MPEP § 1503.02.

For plant patent drawings, 37 CFR 1.165, see 
MPEP § 1606.

For reissue application drawings, see MPEP § 1413.

For correction of drawings, see MPEP § 608.02(p). 
For prints, preparation and distribution, see MPEP § 
508 and § 608.02(m). For prints, return of drawings, 
see MPEP § 608.02(y).

For amendment of drawings, see MPEP § 714.

For pencil notations of classification and name or 
initials of assistant examiner to be placed on drawings, 
see MPEP § 719.03.

The filing of a divisional or continuation application 
under the provisions of 37 CFR 1.53(b) (unexecuted 
application) does not obviate the need for 
acceptable drawings. See MPEP § 608.02(b).

See MPEP § 601.01(f) for treatment of applications 
filed without drawings and MPEP § 601.01(g) for 
treatment of applications filed without all figures of 
drawings.

======VI. DEFINITIONS======

A number of different terms are used when referring 
to drawings in patent applications. The following 
definitions are used in this Manual.

'''Original drawings''': The drawing submitted with the 
application when filed.

'''Substitute drawing''': A drawing filed later than the 
filing date of an application. Usually submitted to 
replace an original informal drawing.

'''Acceptable drawing''': A drawing that is acceptable 
for publication of the application or issuance of the 
patent.

'''Corrected drawing''': A drawing that includes corrections 
of informalities and changes approved by the 
examiner.

'''Informal drawing''': A drawing which does not comply 
with the form requirements of 37 CFR 1.84. 
Drawings may be informal because they are not on 
the proper size sheets, the quality of the lines is poor, 
or for other reasons such as the size of reference elements. 
Informal drawings could be acceptable for the 
purposes of publication and examination. An objection 
will generally only be made to an informal drawing 
if the Office is unable to reproduce the drawing or 
the contents of the drawing are unacceptable to the 
examiner.

'''Drawing print''': This term is used for the white 
paper print prepared by the Scanning Division of the 
Office of Initial Patent Examination (OIPE) of original 
drawings in paper application files. The drawing 
prints contain the application number near the left-
hand margin. Drawing prints should be placed on the 
top on the right-hand flap of the application file wrapper. 
A drawing print is not made for image file wrapper 
(IFW) applications.

'''Interference print''': This term is used to designate 
the copy prepared of the original drawings filed in file 
cabinets separate from the paper file wrappers and 
used to make interference searches.

'''Plan''': This term is used to illustrate the top view.

'''Elevation''': This term is used to illustrate views 
showing the height of objects.

======VII. BLACK AND WHITE PHOTOGRAPHS======

{{statute|37 CFR 1.84. Standards for drawings.}}
{{Ellipsis}}
(b) Photographs.— 

{{tab1}}(1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots (e.g., immunological, western, Southern, and northern), auto- radiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.</p>
|}


Photographs or photomicrographs (not photolithographs 
or other reproductions of photographs made by 
using screens) printed on sensitized paper are acceptable 
as final drawings, in lieu of India ink drawings, 
to illustrate inventions which are incapable of being 
accurately or adequately depicted by India ink drawings, 
e.g., electrophoresis gels, blots, (e.g., immunological, 
western, Southern, and northern), 
autoradiographs, cell cultures (stained and unstained), 
histological tissue cross sections (stained and 
unstained), animals, plants, in vivo imaging, thin 
layer chromatography plates, crystalline structures, 
metallurgical microstructures, textile fabrics, grain 
structures and ornamental effects. The photographs or 
photomicrographs must show the invention more 
clearly than they can be done by India ink drawings 
and otherwise comply with the rules concerning such 
drawings.

Black and white photographs submitted in lieu of 
ink drawings must comply with 37 CFR 1.84(b). 
There is no requirement for a petition or petition fee, 
and only one set of photographs is required. See 1213 
O.G. 108 (Aug. 4, 1998) and 1211 O.G. 34 (June 9, 
1998) and 37 CFR 1.84(b)(1).

Such photographs to be acceptable must be made 
on photographic paper having the following characteristics 
which are generally recognized in the photographic 
trade: double weight paper with a surface 
described as smooth with a white tint. Note that photographs 
filed on or after October 1, 2001 may no 
longer be mounted on Bristol Board. See 37 CFR 
1.84(e) and 1246 O.G. 106 (May 22, 2001). If several 
photographs are used to make one sheet of drawings, 
the photographs must be contained (i.e., developed) 
on a single sheet.

See MPEP § 1503.02 for discussion of photographs 
used in design patent applications.

Photographs may be treated as artifacts and maintained 
in an artifact folder when the patent application 
is an IFW application since the photographs may 
not be able to be accurately reproduced by scanning.

======VIII. COLOR DRAWINGS OR COLOR PHOTOGRAPHS======

{{Statute|37 CFR 1.84. Standards for drawings.}}
(a) Drawings. There are two acceptable categories for presenting 
drawings in utility and design patent applications:
{{Ellipsis}}
{{tab1}}(2) Color. On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility or design patent application or the subject matter of a statutory invention registration. The color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent. Color drawings are not permitted in international applications (see PCT Rule 11.13), or in an application, or copy thereof, submitted under the Office electronic filing system. The Office will accept color drawings in utility or design patent applications and statutory invention registrations only after granting a petition filed under this paragraph explaining why the color drawings are necessary. Any such petition must include the following:</p>

{{tab2}}(i)The fee set forth in § 1.17(h);</p>

{{tab2}}(ii)Three (3) sets of color drawings;</p>

{{tab2}}(iii)An amendment to the specification to insert (unless the specification contains or has been previously amended to contain) the following language as the first paragraph of the brief description of the drawings:</p>

{{tab3}}The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.</p>

(b) Photographs. 
{{Ellipsis}}
(2) Color photographs. Color photographs will be 
accepted in utility and design patent applications if the conditions 
for accepting color drawings and black and white photographs 
have been satisfied. See paragraphs (a)(2) and (b)(1) of this section.
|}


Limited use of color drawings in utility patent 
applications is provided for in 37 CFR 1.84(a)(2) and 
(b)(2). Unless a petition is filed and granted, color 
drawings or color photographs will not be accepted in 
a utility or design patent application. The examiner 
must object to the color drawings or color photographs 
as being improper and require applicant either 
to cancel the drawings or to provide substitute black 
and white drawings.

Under 37 CFR 1.84(a)(2) and (b)(2), the applicant 
must file a petition with fee requesting acceptance of 
the color drawings or color photographs. Three sets of 
color drawings or color photographs must also be submitted 
(37 CFR1.84(a)(2)(ii)). The petition is 
decided by a Supervisory Patent Examiner. See 
MPEP § 1002.02(d). 

If the application is an IFW application, the color 
photographs are maintained in an artifact folder.

Where color drawings or color photographs are 
filed in a continuing application, applicant must 
renew the petition under 37 CFR 1.84(a)(2) and (b)(2) 
even though a similar petition was filed in the prior 
application. Until the renewed petition is granted, the 
examiner must object to the color drawings or color 
photographs as being improper.

In light of the substantial administrative and economic 
burden associated with printing a utility patent 
with color drawings or color photographs, the patent 
copies which are printed at issuance of the patent will 
depict the drawings in black and white only. However, 
a set of color drawings or color photographs will be 
attached to the Letters Patent. Moreover, copies of the 
patent with color drawings or color photographs 
attached thereto will be provided by the U.S. Patent 
and Trademark Office upon special request and payment 
of the fee necessary to recover the actual costs 
associated therewith.

Accordingly, the petition must also be accompanied 
by a proposed amendment to insert the following language 
as the first paragraph in the portion of the specification 
containing a brief description of the 
drawings:

The patent or application file contains at least one drawing 
executed in color. Copies of this patent or patent application 
publication with color drawing(s) will be provided 
by the U.S. Patent and Trademark Office upon request and 
payment of the necessary fee.

It is anticipated that such a petition will be granted 
only when the U.S. Patent and Trademark Office has 
determined that a color drawing or color photograph 
is the only practical medium by which to disclose in a 
printed utility patent the subject matter to be patented.

It is emphasized that a decision to grant the petition 
should not be regarded as an indication that color 
drawings or color photographs are necessary to comply 
with a statutory requirement. In this latter respect, 
clearly it is desirable to file any desired color drawings 
or color photographs as part of the original application 
papers in order to avoid issues concerning 
statutory defects (e.g., lack of enablement under 35 
U.S.C. 112 or new matter under 35 U.S.C. 132).

======IX. DRAWING SYMBOLS======

37 CFR 1.84(n) indicates that graphic drawing 
symbols and other labeled representations may be 
used for conventional elements where appropriate, 
subject to approval by the Office. Also, suitable legends 
may be used, or may be required, in proper 
cases. For examples of suitable symbols and legends, 
see the “Guide for the Preparation of Patent Drawings” 
available from the USPTO web site at 
www.uspto.gov.

The American National Standards Institute (ANSI) 
is a private non-profit organization whose numerous 
publications include some that pertain to graphical 
symbols. Such publications, for examples, Graphic 
Symbols for Fluid Power Diagrams, IEEE Standard 
Graphic Symbols for Logic Functions, Graphic Symbols 
for Electrical and Electronics Diagrams, are considered 
to be generally acceptable in patent drawings. 
ANSI headquarters are at 1819 L Street, NW, Suite 
600, Washington, DC 20036, with offices at 25 West 
43rd Street, New York, NY 10036. The organization’s 
Internet address is www.ansi.org. Although ANSI 
documents and other published sources may be used 
as guides during the selection of graphic symbols for 
patent drawings, the Office will not “approve” any 
published collection of symbols as a group because 
their use and clarity must be decided on a case-by-
case basis. Overly specific symbols should be 
avoided. Symbols with unclear meanings should be 
labeled for clarification.

The following symbols should be used to indicate 
various materials where the material is an important 
feature of the invention. The use of conventional features 
is very helpful in making prior art searches. 

'''Shading examples'''

[[File:MPEP608 02-1.jpg|550px]]
[[File:MPEP608 02-2.jpg|550px]]

====608.02(a) New Drawing — When Replacement is Required Before Examination====

See MPEP § 608.02 for the procedure to follow 
when drawings have not been filed, but a drawing will 
aid in the understanding of the invention. See MPEP 
§ 601.01(f) for the procedure to follow when applications 
appear to be missing sheets of drawings. Drawings 
in utility and plant applications  will be 
reviewed by the Office of Initial Patent Examination 
(OIPE) for compliance with certain requirements of 
37 CFR 1.84. OIPE will send a Notice to File Corrected 
Application Papers if the drawings are not 
acceptable for purposes of publication. The notice 
will give applicant a time period of 2 months from the 
mailing date of the notice to file acceptable drawings. 
This time period for reply is extendable under 37 CFR 
1.136(a). OIPE will not release applications to the 
Technology Centers until acceptable drawings are 
filed in the applications.

If at the time of the initial assignment of an application 
to an examiner’s docket, or if at the time the 
application is taken up for action, the supervisory 
patent examiner believes the  drawings to be of such 
a condition as to not permit reasonable examination of 
the application, applicant should be required to immediately 
submit corrected drawings. However, if the 
drawings do permit reasonable examination and the 
supervisory patent examiner believes the drawings are 
of such a character as to render the application defective 
under 35 U.S.C. 112, examination should begin 
immediately with a requirement for corrected drawings 
and a rejection of the claims as not being in compliance 
with 35 
U.S.C. 112, first paragraph, being 
made.

If the drawings have been indicated by the applicant 
as informal, but no objection has been made to 
the drawings by OIPE (drawings considered acceptable 
by OIPE), the examiner should not require 
replacement of the “informal” drawings with new 
drawings. If the examiner does make objections to the 
drawings, the examiner should require correction in 
reply to the Office action and not permit the objection 
to be held in abeyance. See MPEP § 608.02(b), § 
608.02(d) - § 608.02(h) and § 608.02(p) for further 
information on specific grounds for finding drawings 
informalities.

UNTIMELY FILED DRAWINGS

If a drawing is not timely received in reply to a 
notice from the Office or a letter from the examiner 
who requires a drawing, the application becomes 
abandoned for failure to reply.

For the handling of additional, duplicate, or substitute 
drawings, see MPEP § 608.02(h).

====608.02(b) Informal Drawings====

{{Statute|37 CFR 1.85. Corrections to drawings.}}
(a) A utility or plant application will not be placed on the 
files for examination until objections to the drawings have been 
corrected. Except as provided in § 1.215(c), any patent application 
publication will not include drawings filed after the application 
has been placed on the files for examination. Unless applicant is 
otherwise notified in an Office action, objections to the drawings 
in a utility or plant application will not be held in abeyance, and a 
request to hold objections to the drawings in abeyance will not 
be considered a bona fide attempt to advance the application to 
final action (§ 1.135(c)). If a drawing in a design application 
meets the requirements of § 1.84(e), (f), and (g) and is suitable for 
reproduction, but is not otherwise in compliance with § 1.84, the 
drawing may be admitted for examination.

(b) The Office will not release drawings for purposes of correction. 
If corrections are necessary, new corrected drawings must 
be submitted within the time set by the Office.

(c) If a corrected drawing is required or if a drawing 
does not comply with § 1.84 at the time an application is allowed, 
the Office may notify the applicant and set a three-month period 
of time from the mail date of the notice of allowability within 
which the applicant must file a corrected drawing in compliance 
with § 1.84 to avoid abandonment. This time period is not extendable 
under § 1.136 (a) or § 1.136 (b).
|}


In instances where the drawing is such that the 
prosecution can be carried on without the corrections, 
applicant is informed of the reasons why the drawing 
is objected to on Form PTO-948 or in an examiner’s 
action, and that the drawing is admitted for examination 
purposes only (see MPEP § 707.07(a)). To be 
fully responsive, an amendment must include corrected 
drawings. See 37 CFR 1.85(c) and 37 CFR 
1.121(d). The objection to the drawings will not be 
held in abeyance.

======I. INFORMAL DRAWINGS======

The Office no longer considers drawings as formal 
or informal. Drawings are either acceptable or not 
acceptable. Drawings will be accepted by the Office 
of Initial Patent Examination (OIPE) if the drawings are readable and reproducible for publication purposes. 
See MPEP § 507.

Examiners should review the drawings for disclosure 
of the claimed invention and for proper use of 
reference numerals. Unless applicant is otherwise 
notified in an Office action, objections to the drawings 
in a utility or plant application will not be held in 
abeyance. A request to hold objections to the drawings 
in abeyance will not be considered a bona fideattempt to advance the application to final action (37 
CFR 1.135(c)). Drawing corrections should be made 
promptly before allowance of the application in order 
to avoid delays in issuance of the application as a 
patent or a reduction to any term adjustment. See 37 
CFR 1.704(c)(10).

======II. NOTIFYING APPLICANT======

If the original drawings are not acceptable, a 2-part 
form, PTO-948, may be used to indicate what the 
objections are and that new corrected drawings are 
required. In either case, the drawings will be accepted 
as satisfying the requirements of 37 CFR 1.51. The 
examiners are directed to advise the applicants by 
way of form PTO-948 (see MPEP § 707.07(a)) in the 
first Office action of the reasons why the drawings are 
not acceptable.

======III. HANDLING OF REPLACEMENT DRAWINGS======

In those situations where an application is filed 
with unacceptable drawings, applicants will be notified 
by OIPE to file new acceptable drawings complying 
with 37 CFR 1.84 and 1.121(d). If the requirement 
for corrected drawings appears on the notice of 
allowability (PTOL-37), the drawings must be filed 
within three months of the date of mailing of the 
notice of allowability. Also, each sheet of the drawing 
should include the application number and the art unit 
in the upper center margin (37 CFR 1.84(c)) and 
labeled, in the header, “Replacement Sheet.” In the 
past, some drawings have been misdirected because 
the art unit indicated on the filing receipt was used 
rather than that indicated on the notice forms.

In utility applications, the examination will normally 
be conducted using the originally presented 
drawings. The sufficiency of disclosure, as concerns 
the subject matter claimed, will be made by the examiner 
utilizing the original drawings. IT IS APPLICANT’S 
RESPONSIBILITY TO SEE THAT NO 
NEW MATTER IS ADDED when submitting 
replacement drawings after allowance since they will 
not normally be reviewed by an examiner. Of course, 
if the examiner notices new matter in the replacement 
drawings, appropriate action to have the new matter 
deleted should be undertaken.

====608.02(c) Drawing Print Kept in File Wrapper====

The drawing prints must always be kept on top of 
the papers on the right side of the file wrapper under 
any bibliographic data sheet , if the application is 
maintained in paper. If the application is maintained 
in an image file wrapper (IFW) and the drawings are 
photographs or in color, the original photographs or 
color drawings may be maintained in an artifact 
folder. For IFW processing, see IFW Manual.

Applications may be sent to issue or to the Files 
Repository without the original drawing, if any, if the 
drawing cannot be located. For an application sent to 
issue with missing drawings, see MPEP § 608.02(z). 
For abandoned applications sent to the Files Repository, 
a notation should be made on the Contents portion 
of the file wrapper that the drawings were 
missing.

Upon initial processing, the original drawings are 
placed in the center portion of the application file 
wrapper under the specification , if the application is 
maintained in paper, and the executed oath or declaration 
by the Scanning Division.

====608.02(d) Complete Illustration in Drawings====

{{Statute|37 CFR 1.83. Content of drawing.}}
(a) The drawing in a nonprovisional application must 
show every feature of the invention specified in the claims. However, 
conventional features disclosed in the description and 
claims, where their detailed illustration is not essential for a 
proper understanding of the invention, should be illustrated in the 
drawing in the form of a graphical drawing symbol or a labeled 
representation (e.g., a labeled rectangular box). In addition, tables 
and sequence listings that are included in the specification are, 
except for applications filed under 35 U.S.C. 371, not permitted to 
be included in the drawings.

(b) When the invention consists of an improvement on an 
old machine the drawing must when possible exhibit, in one or 
more views, the improved portion itself, disconnected from the 
old structure, and also in another view, so much only of the old 
structure as will suffice to show the connection of the invention 
therewith.

(c) Where the drawings in a nonprovisional application do 
not comply with the requirements of paragraphs (a) and (b) of this 
section, the examiner shall require such additional illustration 
within a time period of not less than two months from the date of 
the sending of a notice thereof. Such corrections are subject to the 
requirements of § 1.81(d).
|}

Any structural detail that is of sufficient importance 
to be described should be shown in the drawing. (Ex 
parte Good, 1911 C.D. 43, 164 O.G. 739 (Comm’r 
Pat. 1911).)

====608.02(e) Examiner Determines Completeness and Consistency of Drawings====

The examiner should see to it that the figures are 
correctly described in the brief description of the several 
views of the drawing section of the specification, 
that the reference characters are properly applied, that 
no single reference character is used for two different 
parts or for a given part and a modification of such 
part, and that there are no superfluous illustrations.

====608.02(f) Modifications in Drawings====

Modifications may not be shown in broken lines on 
figures which show in solid lines another form of the 
invention. Ex parte Badger, 1901 C.D. 195, 97 O.G. 
1596 (Comm’r Pat. 1901).

All modifications described must be illustrated, or 
the text canceled. (Ex parte Peck, 1901 C.D. 136, 96 
O.G. 2409 (Comm’r Pat. 1901).) This requirement 
does not apply to a mere reference to minor variations 
nor to well-known and conventional parts.

====608.02(g) Illustration of Prior Art====

Figures showing the prior art are usually unnecessary 
and should be canceled. Ex parte Elliott, 1904 
C.D. 103, 109 O.G. 1337 (Comm’r Pat. 1904). However, 
where needed to understand applicant’s invention, 
they may be retained if designated by a legend 
such as “Prior Art.” 

====608.02(h) Replacement Drawings====

When an amendment is filed stating that replacement 
sheets of drawings are filed with the amendment 
and such drawings have not been transmitted to the 
Technology Center (TC), the technical support staff in 
the TC should attempt to locate the missing drawings. 
In the next communication of the examiner, the applicant 
is notified if the drawings have been received and 
whether or not the replacement drawings have been 
entered in the application. If the replacement drawings 
are not entered, the examiner should give the 
applicant a concise and complete explanation as to 
why the drawings were not entered.

Replacement drawings, together with the file wrapper, 
may be routed through the TC Draftsperson if the 
examiner would like the draftsperson’s assistance in 
identifying errors in the drawings. For Image File 
Wrapper (IFW) processing, see IFW Manual. The 
draftsperson will note any defects of the drawings on 
a PTO-948. 

The examiner should not overlook such factors as 
new matter, the necessity for the replacement sheets 
and consistency with other sheets. The technical support 
staff will routinely enter all replacement sheets in 
the contents of the application. For IFW processing, 
see IFW Manual. If the examiner decides that the 
sheets should not be entered, the examiner should provide 
the applicant with the complete, explicit reasoning 
for the denial of entry. The entries made by the 
technical support staff will be marked “(N.E.).” 

====608.02(i) Transfer of Drawings From Prior Applications====

Transfer of drawings from a first pending application 
to another will be made only upon the granting of 
a petition filed under 37 CFR 1.182 which must set 
forth a hardship situation requiring such transfer of 
drawings.

====608.02(m) Drawing Prints====

Preparation and distribution of drawing prints is 
discussed in MPEP § 508.

Prints are made of acceptable drawings of an application 
maintained in paper. These prints are kept on 
top of the papers on the right side of the file wrapper 
under any bibliographic data sheet. See MPEP § 
719.01(b). No drawing prints are made for an image 
file wrapper (IFW) application.

The original drawing, of course, should not be 
marked up by the examiner. Where, as in an electrical 
wiring application, it is desirable to identify the various 
circuits by different colors, or in any more or less 
complex application, it is advantageous to apply legends, 
arrows, or other indicia, the drawing prints may 
be used and retained unofficially in the file since the 
drawing prints are no longer needed for a record of 
the drawings as originally filed. If the application is 
maintained in paper, the drawing prints, as colored by 
the examiner, may be retained in the paper application file. If the application is an IFW application, the 
drawing prints may be retained by the examiner.

Prints remain in the paper application file at all 
times except as provided in MPEP § 608.02(c).

====608.02(n) Duplicate Prints in Patentability Report Applications====

In patentability report cases having drawings, the 
examiner to whom the application is assigned should 
normally obtain a duplicate set of the interference 
prints of the drawing for filing in the Technology Center 
(TC) to which the application is referred.

When an application that has had patentability 
report prosecution is passed for issue or becomes 
abandoned, notification of this fact is given by the TC 
having jurisdiction of the case to each TC that submitted 
a patentability report. The examiner of each such 
reporting TC notes the date of allowance or abandonment 
on his or her duplicate set of prints. At such time 
as these prints become of no value to the reporting 
TC, they may be destroyed.

For patentability reports, see MPEP § 705 to 
§ 705.01(f).

====608.02(o) Notations Entered on Drawing====

Drawings are no longer endorsed with an application 
number or receipt date. A draftsperson’s 
“stamp” to indicate approval is no longer required on 
patent drawings, and these stamps are no longer used 
by draftspersons. If the drawings in an allowed application 
are not indicated as having been disapproved or 
canceled, the most-recently filed drawings will be 
used for printing the patent.

====608.02(p) Correction of Drawings====

{{Statute|37 CFR 1.121. Manner of making amendments in application.}}
{{Ellipsis}}
(d) Drawings: One or more application drawings shall 
be amended in the following manner: Any changes to an application 
drawing must be in compliance with § 1.84 and must be submitted 
on a replacement sheet of drawings which shall be an 
attachment to the amendment document and, in the top margin, 
labeled “Replacement Sheet”. Any replacement sheet of drawings 
shall include all of the figures appearing on the immediate prior 
version of the sheet, even if only one figure is amended. Any new 
sheet of drawings containing an additional figure must be labeled 
in the top margin as “New Sheet”. All changes to the drawings 
shall be explained, in detail, in either the drawing amendment or 
remarks section of the amendment paper.

{{tab1}}(1) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change to the drawings.</p>

{{tab1}}(2) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.</p>
|}


{{Statute|37 CFR 1.85. Corrections to drawings.}}
(a) A utility or plant application will not be placed on the 
files for examination until objections to the drawings have been 
corrected. Except as provided in § 1.215(c), any patent application 
publication will not include drawings filed after the application 
has been placed on the files for examination. Unless applicant is 
otherwise notified in an Office action, objections to the drawings 
in a utility or plant application will not be held in abeyance, and a 
request to hold objections to the drawings in abeyance will not 
be considered a bona fide attempt to advance the application to 
final action (§ 1.135(c)). If a drawing in a design application 
meets the requirements of § 1.84(e), (f), and (g) and is suitable for 
reproduction, but is not otherwise in compliance with § 1.84, the 
drawing may be admitted for examination.

(b) The Office will not release drawings for purposes of correction. 
If corrections are necessary, new corrected drawings must 
be submitted within the time set by the Office.

(c) If a corrected drawing is required or if a drawing 
does not comply with § 1.84 at the time an application is allowed, 
the Office may notify the applicant and set a three-month period 
of time from the mail date of the notice of allowability within 
which the applicant must file a corrected drawing in compliance 
with § 1.84 to avoid abandonment. This time period is not extendable 
under § 1.136(a) or § 1.136(b).
|}


See also MPEP § 608.02(b). For correction at 
allowance and issue, see MPEP § 608.02(w) and 
MPEP § 1302.05.

A canceled figure may be reinstated. An amendment 
should be made to the specification adding the 
brief description of the view if a canceled figure is 
reinstated.

====608.02(q) Conditions Precedent to Amendment of Drawing====

See MPEP § 507 for changes to the patent drawings 
for purposes of a patent application publication.

If applicant wishes to amend the original drawings, 
at his or her own initiative, applicant is encouraged to 
submit new drawings as soon as possible, and preferably 
before allowance of the application. 

====608.02(t) Cancellation of Figures====

If a drawing figure is canceled, a replacement 
sheet of drawings must be submitted without the figure 
(see 37 CFR 1.121(d)). If the canceled drawing 
figure was the only drawing on the sheet, then only a 
marked-up copy of the drawing sheet including an 
annotation showing that the drawing has been cancelled 
is required. The marked-up (annotated) copy 
must be clearly labeled as 'Annotated Sheet' and must 
be presented in the amendment or remarks section of 
the amendment document which explains the changes 
to the drawings (see 37 CFR 1.121(d)(1)). The brief 
description of the drawings should also be amended to 
reflect this change.

====608.02(v) Drawing Changes Which Require Annotated Sheets====

When changes are to be made in the drawing itself, 
other than mere changes in reference characters, designations 
of figures, or inking over lines pale and 
rough, a marked-up copy of the drawing should 
be filed with a replacement drawing. The marked-up 
copy must be clearly labeled as “Annotated Sheet.” 
See 37 CFR 1.84(c) and 1.121(d). Ordinarily, broken 
lines may be changed to full without a sketch.

Annotated sheets filed by an applicant and used for 
correction of the drawing will not be returned. All 
such annotated sheets must be in ink or permanent 
prints.

====608.02(w) Drawing Changes Which May Be Made Without Applicant’s Annotated Sheets====

Where an application is ready for issue except for a 
slight defect in the drawing not involving change in 
structure, the examiner will prepare a letter to the 
applicant indicating the change to be made and 
include a marked-up copy of the drawing 
showing the addition or alteration to be made. The 
marked-up copy of the drawing should be attached to 
the letter to the applicant and a copy placed in the 
application file.

The correction must be made at applicant’s 
expense.

As a guide to the examiner, the following corrections 
are illustrative of those that may be made by 
an annotated sheet:

(A) Adding two or three reference characters or 
exponents.

(B) Changing one or two numerals or figure ordinals. 
Garrett v. Cox, 233 F.2d 343, 346, 110 USPQ 
52, 54 
(CCPA 1956).

(C) Removing superfluous matter.

(D) Adding or reversing directional arrows.

(E) Changing Roman Numerals to Arabic 
Numerals to agree with specification.

(F) Adding section lines or brackets, where easily 
executed.

(G) Changing lead lines.

(H) Correcting misspelled legends.

====608.02(x) Drawing Corrections or Changes Accepted Unless Notified Otherwise====

Drawing corrections or changes will be entered 
at the time they are presented, unless applicant is notified 
to the contrary by the examiner in the action following 
the amended drawing submission.

CORRECTION OR CHANGE NOT ACCEPTED

Where the corrected or changed drawing is not 
accepted, for example, because the submitted corrections 
or changes are erroneous, or involve new 
matter or  do not include all necessary corrections, 
the applicant will be notified and informed of any 
required corrective action in the next Office action. 
The examiner should explicitly and clearly set forth 
all the reasons for not approving the corrections to the 
drawings in the next communication to the applicant. 
See MPEP § 608.02(p) for suggested form paragraphs 
that may be used by examiners to notify applicants of 
drawing corrections.

====608.02(y)Return of Drawing====

Drawings will not be returned to the applicant.

====608.02(z) Allowable Applications Needing Drawing Corrections or Corrected Drawings====

If an application is being allowed, and corrected 
drawings have not been filed, form PTOL-37 provides 
an appropriate check box for requiring corrected 
drawings.

Allowable applications with drawings that were 
indicated by the applicant to be informal should be 
turned in for counting and forwarding to the Publishing 
Division without the drawings having been corrected. 
Examiners should not require new drawings 
merely because the applicant indicated that the drawings 
submitted on filing were informal. If at allowance, 
the examiner determines that correction is 
required, the drawings requiring correction should be 
placed as the top papers in the center fold of the file 
wrapper, if the application is maintained in paper. For 
Image File Wrapper (IFW) processing, see IFW Manual. 
A proposed drawing correction, for example a 
drawing sheet with corrections marked in pencil, 
should be stapled to the right outside flap of the file 
wrapper over the area having the search information. 
Care should be taken to make certain that the corrections 
have been approved by the examiner. Such 
approval should be made by the examiner prior to 
counting the allowance of the application by writing 
“Approved,” the examiner’s initials or full name, and 
the date, on the front page of the proposed drawing 
corrections. In IFW applications, generally, the most 
recently filed drawings will be used for printing, 
unless they have been indicated as “Not Entered.”

Extensions of time to provide acceptable drawings 
after the mailing of a notice of allowability are no 
longer permitted. If the Office of Publications 
receives drawings that cannot be scanned or are otherwise 
unacceptable for publication, the Office of Publication 
will mail a requirement for corrected drawings, 
giving applicant a shortened statutory period of two 
months (with no extensions of time permitted) to 
reply. The drawings will ordinarily not be returned to 
the examiner for corrections.

I. APPLICATIONS HAVING LOST DRAWINGS

A replacement drawing should be obtained from 
the Office of Initial Patent Examination’s records of 
the application as originally filed. If the reproduced 
drawings are not acceptable for publishing, applicant 
should be required to submit corrected drawings.

The Notice of Allowability is verified and printed 
using PALM, and the Notice is mailed to the applicant.

The application is then forwarded to Licensing and 
Review or the Publishing Division, as appropriate, 
using the PALM transaction code after the application 
has been revised for issue.

II. UTILITY PATENT APPLICATIONS RECEIVING 
FORMAL DRAWINGS AFTER 
THE NOTICE OF ALLOWABILITY

Where replacement drawings are received in utility 
patent applications examined with informal drawings 
and the Notice of Allowability was mailed prior to the 
receipt of the replacement drawings, the technical 
support staff should forward the replacement drawings 
to the Publishing Division. Submission to the 
examiner is not necessary unless an amendment 
accompanies the drawings which changes the specification, 
such as where the description of figures is 
added or canceled.

III. BORROWING FILES FROM PUBLISHING 
DIVISION

Allowed files requiring drawing corrections are 
sent to the Publishing Division. At times, examiners 
have a 
need to borrow these applications. When borrowing 
applications, examining corps personnel must 
submit a request to the Office of Patent Publications 
Customer Service Center.

IV. 37 CFR 1.312 AMENDMENTS

For information on handling amendments to drawings 
filed under 37 CFR 1.312, see MPEP § 714.16.

===608.03 Models, Exhibits, Specimens===

{{Statute|35 U.S.C. 114. Models, specimens.}}
The Director may require the applicant to furnish a model of 
convenient size to exhibit advantageously the several parts of his 
invention.

When the invention relates to a composition of matter, the 
Director may require the applicant to furnish specimens or ingredients 
for the purpose of inspection or experiment.
|}


{{Statute|37 CFR 1.91. Models or exhibits not generally admitted aspart of application or patent.}}
(a) A model or exhibit will not be admitted as part of the 
record of an application unless it:

{{tab1}}(1)Substantially conforms to the requirements of §1.52or §1.84;</p>

{{tab1}}(2) Is specifically required by the Office; or</p>

{{tab1}}(3) Is filed with a petition under this section including:</p>

{{tab2}}(i) The fee set forth in §1.17(h); and</p>

{{tab2}}(ii) An explanation of why entry of the model or exhibit in the file record is necessary to demonstrate patentability.</p>

(b) Notwithstanding the provisions of paragraph (a) of this 
section, a model, working model, or other physical exhibit may be 
required by the Office if deemed necessary for any purpose in 
examination of the application.

(c) Unless the model or exhibit substantially conforms to the 
requirements of § 1.52 or § 1.84 under paragraph (a)(1) of this 
section, it must be accompanied by photographs that show multiple 
views of the material features of the model or exhibit and that 
substantially conform to the requirements of § 1.84.
|}


Models or exhibits are generally not admitted as 
part of an application or patent unless the requirements 
of 37 CFR 1.91 are satisfied.

With the exception of cases involving perpetual 
motion, a model is not ordinarily required by the 
Office to demonstrate the operability of a device. If 
operability of a device is questioned, the applicant 
must establish it to the satisfaction of the examiner, 
but he or she may choose his or her own way of so 
doing.

Models or exhibits that are required by the Office 
or filed with a petition under 37 CFR 1.91(a)(3) must 
be accompanied by photographs that (A) show multiple 
views of the material features of the model or 
exhibit, and (B) substantially conform to the requirements 
of 37 CFR 1.84. See 37 CFR 1.91(c). Material 
features are considered to be those features which represent 
that portion(s) of the model or exhibit forming 
the basis for which the model or exhibit has been submitted. 
Where a video or DVD or similar item is submitted 
as a model or exhibit, applicant must submit 
photographs of what is depicted in the video or DVD 
(the content of the material such as a still image single 
frame of a movie) and not a photograph of a video 
cassette, DVD disc or compact disc.

{{Statute|37 CFR 1.93. Specimens.}}
When the invention relates to a composition of matter, the 
applicant may be required to furnish specimens of the composition, 
or of its ingredients or intermediates, for the purpose of 
inspection or experiment.
|}


See MPEP Chapter 2400 regarding treatment of 
biotechnology deposits.

====608.03(a)Handling of Models, Exhibits, and Specimens====

All models and exhibits received in the U.S. Patent 
and Trademark Office should be taken to the Technology 
Center (TC) assigned the related application for 
examination. The receipt of all models and exhibits 
which are to be entered into the application file record 
must be properly recorded on the “Contents” portion 
of the application file wrapper or, if the application is 
an Image File Wrapper (IFW) application, on an artifact 
sheet. For IFW processing, see IFW Manual section 
3.6.

A label indicating the application number, filing 
date, and attorney’s name and address should be 
attached to the model or exhibit so that it is clearly 
identified and easily returned. The Office may 
return the model, exhibit, or specimen, at any time 
once it is no longer necessary for the conduct of business 
before the Office and return of the model or 
exhibit is appropriate. See 37 
CFR 1.94.

If the model or exhibit cannot be conveniently 
stored within the application file wrapper or in an artifact 
folder, it should not be accepted.

Models and exhibits may be presented for demonstration 
purposes during an interview. The models and 
exhibits should be taken away by applicant or his/her 
attorney or agent at the conclusion of the interview 
since models or exhibits are generally not permitted to 
be admitted as part of the application or patent unless 
the requirements of 37 
CFR 1.91 are satisfied. See 
MPEP § 713.08. A full description of what was demonstrated 
or exhibited during the interview must be 
made of record. See 37 CFR 1.133. Any model or 
exhibit that is left with the examiner at the conclusion of the interview, which is not made part of the application 
or patent, may be disposed of at the discretion 
of the Office. 

{{Statute|37 CFR 1.94. Return of models, exhibits or specimens.}}
(a) Models, exhibits, or specimens may be returned to the 
applicant if no longer necessary for the conduct of business before 
the Office. When applicant is notified that a model, exhibit, or 
specimen is no longer necessary for the conduct of business 
before the Office and will be returned, applicant must arrange for 
the return of the model, exhibit, or specimen at the applicant’s 
expense. The Office will dispose of perishables without notice to 
applicant unless applicant notifies the Office upon submission of 
the model, exhibit or specimen that a return is desired and makes 
arrangements for its return promptly upon notification by the 
Office that the model, exhibit or specimen is no longer necessary 
for the conduct of business before the Office.

(b) Applicant is responsible for retaining the actual model, 
exhibit, or specimen for the enforceable life of any patent resulting 
from the application. The provisions of this paragraph do not 
apply to a model or exhibit that substantially conforms to the 
requirements of § 1.52 or § 1.84, where the model or exhibit has 
been described by photographs that substantially conform to §
1.84, or where the model, exhibit or specimen is perishable.

(c) Where applicant is notified, pursuant to paragraph (a) of 
this section, of the need to arrange for return of a model, exhibit or 
specimen, applicant must arrange for the return within the period 
set in such notice, to avoid disposal of the model, exhibit or specimen 
by the Office. Extensions of time are available under § 1.136, 
except in the case of perishables. Failure to establish that the 
return of the item has been arranged for within the period set or 
failure to have the item removed from Office storage within a reasonable 
amount of time notwithstanding any arrangement for 
return, will permit the Office to dispose of the model, exhibit or 
specimen.
|}


When applicant is notified that a model, 
exhibit, or specimen is no longer necessary for the 
conduct of business before the Office and will be 
returned, applicant must make arrangements for the 
return of the model, exhibit, or specimen at applicant’s 
expense. The Office may return the model, 
exhibit, or specimen at any time once it is no longer 
necessary for the conduct of business and need not 
wait until the close of prosecution or later. Where the 
model, exhibit, or specimen is a perishable, the Office 
will be presumed to have permission to dispose of the 
item without notice to applicant, unless applicant notifies 
the Office upon submission of the item that a 
return is desired and arrangements are promptly made 
for the item’s return upon notification by the Office.

For models, exhibits, or specimens that are 
returned, applicant is responsible for retaining the 
actual model, exhibit, or specimen for the enforceable 
life of any patent resulting from the application except 
where: (A) the model or exhibit substantially conforms 
to the requirements of 37 CFR 1.52 or 1.84; (B) 
the model or exhibit has been described by photographs 
that substantially conform to 37 CFR 1.84; or 
(C) the model, exhibit, or specimen is perishable. 
Applicant may be called upon to resubmit such 
returned model, exhibit, or specimen under appropriate 
circumstances, such as where a continuing application 
is filed. 

The notification to applicant that a model, exhibit, 
or specimen is no longer necessary for the conduct of 
business before the Office will set a time period 
within which applicant must make arrangements for a 
return of a model, exhibit, or specimen. The time 
period is normally one month from the mailing date of 
the notification, unless the item is perishable, in 
which case the time period will be shorter. Extensions 
of time are available under 37 CFR 1.136, except in 
the case of perishables. Failure by applicant to establish 
that arrangements for the return of a model, 
exhibit, or specimen have been made within the time 
period set in the notice will result in the disposal of 
the model, exhibit, or specimen by the Office.

For plant specimens, see MPEP § 1607 and 37 CFR 1.166.

{{Statute|37 CFR 1.95. Copies of exhibits.}}
Copies of models or other physical exhibits will not ordinarily 
be furnished by the Office, and any model or exhibit in an application 
or patent shall not be taken from the Office except in the custody 
of an employee of the Office specially authorized by the 
Director.
|}


===608.04 New Matter===

37 CFR 1.121. Manner of making amendments in applications.



(f)No new matter. No amendment may introduce new matter 
into the disclosure of an application.



In establishing a disclosure, applicant may rely not 
only on the specification and drawing as filed but also 
on the original claims if their content justifies it. See 
MPEP § 608.01(l).

While amendments to the specification and claims 
involving new matter are ordinarily entered, such 
matter is required to be canceled from the descriptive 
portion of the specification, and the claims affected 
are rejected under 35 
U.S.C. 112, first paragraph.

When new matter is introduced into the specification, 
the amendment should be objected to under 35 
U.S.C. 132 (35 U.S.C. 251 if a reissue application) 
and a requirement made to cancel the new matter. The 
subject matter which is considered to be new matter 
must be clearly identified by the examiner. If the new 
matter has been entered into the claims or affects the 
scope of the claims, the claims affected should be 
rejected under 35 U.S.C. 112, first paragraph, because 
the new matter is not described in the application as 
originally filed.

A “new matter” amendment of the drawing is ordinarily 
not entered; neither is an additional or substitute 
sheet containing “new matter” even though 
provisionally entered by the TC technical support 
staff. See MPEP § 608.02(h).

The examiner’s holding of new matter may be petitionable 
or appealable. See MPEP § 608.04(c).

For new matter in reissue application, see MPEP 
§ 1411.02. For new matter in substitute specification, 
see MPEP § 608.01(q).

Note: No amendment is permitted in a provisional 
application after it receives a filing date.

====608.04(a) Matter Not in Original Specification, Claims, or Drawings====

Matter not in the original specification, claims, or 
drawings is usually new matter. Depending on circumstances 
such as the adequacy of the original disclosure, 
the addition of inherent characteristics such 
as chemical or physical properties, a new structural 
formula or a new use may be new matter. See Ex parte 
Vander Wal, 109 USPQ 119, 1956 C.D. 11, 705 O.G. 5 
(Bd. App. 1955) (physical properties), Ex parte Fox, 
128 USPQ 157, 1960 C.D. 28, 761 O.G. 906 (Bd. 
App. 1957) (new formula) and Ex parte Ayers, 108 
USPQ 444 (Bd. App. 1955) (new use). For rejection 
of claim involving new matter, see MPEP 
§

706.03(o).

For completeness of disclosure, see MPEP § 
608.01(p). For trademarks and tradenames, see 
MPEP § 608.01(v).

====608.04(b)New Matter by PreliminaryAmendment [R-3]====

A preliminary amendment present on the filing 
date of the application (e.g., filed along with the filing 
of the application) is considered a part of the original 
disclosure. See MPEP § 714.01(e) and § 602. A preliminary 
amendment filed after the filing date of the 
application is not part of the original disclosure of 
the 
application. See MPEP § 706.03(o). For applications 
filed on or after September 21, 2004, the Office 
will automatically treat any preliminary amendment 
under 37 CFR 1.115(a)(1) that is present on the 
filing 
date of the application as part of the original 
disclosure. If a preliminary amendment is present on 
the filing date of 
an application, and the oath or declaration 
under 
37 
CFR 1.63 does not also refer to the 
preliminary amendment, the normal operating procedure 
is 
to 
not 
screen the preliminary amendment to 
determine whether 
it contains subject matter not otherwise 
included in the specification or drawings of the 






application as filed (i.e., subject matter that is “new 
matter” relative to the specification and drawings of 
the application). As a result, it is applicant’s obligation 
to review the preliminary amendment to ensure 
that it does not contain subject matter not otherwise 
included in the specification or drawings of the application 
as filed. If the preliminary amendment contains 
subject matter not otherwise included in the specification 
and drawings of the application, applicant must 
provide a supplemental oath or declaration under 37 
CFR 1.67 referring to such preliminary amendment. 
The failure to submit a supplemental oath or declaration 
under 37 CFR 1.67 referring to a preliminary 
amendment that contains subject matter not otherwise 
included in the specification or drawings of the application 
as filed removes safeguards that are implied in 
the oath or declaration requirements that the inventor 
review and understand the contents of the application, 
and acknowledge the duty to disclose to the Office all 
information known to be material to patentability as 
defined in 37 CFR 1.56.

Applicants can avoid the need to file an oath or declaration 
referring to any preliminary amendment by 
incorporating any desired amendments into the text of 
the specification including a new set of claims when 
filing the application instead of filing a preliminary 
amendment, even where the application is a continuation 
or divisional application of a prior-filed application. 
Furthermore, applicants are strongly encouraged 
to avoid submitting any preliminary amendments so 
as to minimize the burden on the Office in processing 
preliminary amendments and reduce delays in processing 
the application.

During examination, if an examiner determines that 
a preliminary amendment that is present on the filing 
date of the application includes subject matter not otherwise 
supported by the originally filed specification 
and drawings, and the oath or declaration does not 
refer to the preliminary amendment, the examiner 
may require the applicant to file a supplemental oath 
or declaration under 37 CFR 1.67 referring to the preliminary 
amendment. In response to the requirement, 
applicant must submit (1) an oath or declaration that 
refers to the preliminary amendment, (2) an amendment 
that cancels the subject matter not supported by 
the originally filed specification and drawings, or (3) 
a request for reconsideration.

For applications filed prior to September 21, 2004, 
a preliminary amendment that was present on the filing 
date of an application may be considered a part of 
the original disclosure if it was referred to in a first 
filed oath or declaration in compliance with 37 CFR 
1.63. If the preliminary amendment was not referred 
to in the oath or declaration, applicant will be required 
to submit a supplemental oath or declaration under 37 
CFR 1.67 referring to both the application and the 
preliminary amendment filed with the original application. 
A surcharge under 37 CFR 1.16(f) will also be 
required unless it has been previously paid.

====608.04(c)Review of Examiner’s Holding of New Matter====

Where the new matter is confined to amendments 
to the specification, review of the examiner’s requirement 
for cancelation is by way of petition. But where 
the alleged new matter is introduced into or affects the 
claims, thus necessitating their rejection on this 
ground, the question becomes an appealable one, and 
should not be considered on petition even though that 
new matter has been introduced into the specification 
also. 37 CFR 1.181 and 37 CFR 1.191 afford the 
explanation of this seemingly inconsistent practice as 
affecting new matter in the specification.

===608.05 Sequence Listing Table, or Computer Program Listing Appendix Submitted on a Compact Disc[R-5]===

{{Statute|37 CFR 1.52. Language, paper, writing, margins, compact disc specifications.}}
(e) Electronic documents that are to become part of the permanent 
United States Patent and Trademark Office records in the 
file of a patent application or reexamination proceeding.

:(1) The following documents may be submitted to the Office on a compact disc in compliance with this paragraph:

::(i)A computer program listing (see § 1.96);

::(ii)A “Sequence Listing” (submitted under § 1.821(c)); or

::(iii)Any individual table (see § 1.58) if the table is more than 50 pages in length, or if the total number of pages of all of the tables in an application exceeds 100 pages in length, where a table page is a page printed on paper in conformance with paragraph (b) of this section and § 1.58(c).

:(2)A compact disc as used in this part means a Compact Disc-Read Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance with this paragraph. A CD-ROM is a “read-only” medium on which the data is pressed into the disc so that it cannot be changed or erased. A CD-R is a “write once” medium on which once the data is recorded, it is permanent and cannot be changed or erased.

:(3)
::(i) Each compact disc must conform to the International Standards Organization (ISO) 9660 standard, and the contents of each compact disc must be in compliance with the American Standard Code for Information Interchange (ASCII). CD-R discs must be finalized so that they are closed to further writing to the CD-R.

::(ii)Each compact disc must be enclosed in a hard compact disc case within an unsealed padded and protective mailing envelope and accompanied by a transmittal letter on paper in accordance with paragraph (a) of this section. The transmittal letter must list for each compact disc the machine format (e.g., IBM-PC, Macintosh), the operating system compatibility (e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret (e.g., tables in landscape orientation should be identified as landscape orientation or be identified when inquired about) the information on the compact disc. Compact discs submitted to the Office will not be returned to the applicant.

:(4)Any compact disc must be submitted in duplicate unless it contains only the “Sequence Listing” in computer readable form required by § 1.821(e). The compact disc and duplicate copy must be labeled “Copy 1” and “Copy 2,” respectively. The transmittal letter which accompanies the compact disc must include a statement that the two compact discs are identical. In the event that the two compact discs are not identical, the Office will use the compact disc labeled “Copy 1” for further processing. Any amendment to the information on a compact disc must be by way of a replacement compact disc in compliance with this paragraph containing the substitute information, and must be accompanied by a statement that the replacement compact disc contains no new matter. The compact disc and copy must be labeled “COPY 1 REPLACEMENT MM/DD/YYYY” (with the month, day and year of creation indicated), and “COPY 2 REPLACEMENT MM/DD/YYYY,” respectively.

:(5)The specification must contain an incorporation-by-reference of the material on the compact disc in a separate paragraph (§ 1.77(b)(5)), identifying each compact disc by the names of the files contained on each of the compact discs, their date of creation and their sizes in bytes. The Office may require applicant to amend the specification to include in the paper portion any part of the specification previously submitted on compact disc.

:(6)A compact disc must also be labeled with the following information:

::(i)The name of each inventor (if known);

::(ii)Title of the invention;

::(iii)The docket number, or application number if known, used by the person filing the application to identify the application; and

::(iv)A creation date of the compact disc.

::(v)If multiple compact discs are submitted, the label shall indicate their order (e.g. “1 of X”).

::(vi)An indication that the disk is “Copy 1” or “Copy 2” of the submission. See paragraph (b)(4) of this section.

:(7)If a file is unreadable on both copies of the disc, the unreadable file will be treated as not having been submitted. A file is unreadable if, for example, it is of a format that does not comply with the requirements of paragraph (e)(3) of this section, it is corrupted by a computer virus, or it is written onto a defective compact disc.

(f)
:(1) Any sequence listing in an electronic medium in compliance with §§ 1.52(e) and 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, will be excluded when determining the application size fee required by § 1.16(s) or § 1.492(j). For purposes of determining the application size fee required by § 1.16(s) or §1.492(j), for an application the specification and drawings of which, excluding any sequence listing in compliance with §1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, are submitted in whole or in part on an electronic medium other than the Office electronic filing system, each three kilobytes of content submitted on an electronic medium shall be counted as a sheet of paper.

:(2)Except as otherwise provided in this paragraph, the paper size equivalent of the specification and drawings of an application submitted via the Office electronic filing system will be considered to be the number of sheets of paper present in the specification and drawings of the application when entered into the Office file wrapper after being rendered by the Office electronic filing system for purposes of computing the application size fee required by § 1.16(s). Any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing in compliance with § 1.96, submitted via the Office electronic filing system will be excluded when determining the application size fee required by § 1.16(s) if the listing is submitted in ACSII text as part of an associated file.
|}

37 CFR 1.77. Arrangement of application elements.

(a)The elements of the application, if applicable, should 
appear in the following order:

(1)Utility application transmittal form.

(2)Fee transmittal form.

(3)Application data sheet (see § 1.76).

(4)Specification.

(5)Drawings.

(6)Executed oath or declaration.

(b)The specification should include the following sections 
in order:

(1)Title of the invention, which may be accompanied by 
an introductory portion stating the name, citizenship, and residence 
of the applicant (unless included in the application data 
sheet).






(2)Cross-reference to related applications (unless 
included in the application data sheet).

(3)Statement regarding federally sponsored research or 
development.

(4)The names of the parties to a joint research agreement.


(5)Reference to a “Sequence Listing,” a table, or a computer 
program listing appendix submitted on a compact disc and 
an incorporation-by-reference of the material on the compact disc 
(see § 1.52(e)(5)). The total number of compact discs including 
duplicates and the files on each compact disc shall be specified.

(6)Background of the invention.

(7)Brief summary of the invention.

(8)Brief description of the several views of the drawing.

(9)Detailed description of the invention.

(10) A claim or claims.

(11) Abstract of the disclosure.

(12) “Sequence Listing,” if on paper (see §§ 
 
1.821through 1.825).

(c)The text of the specification sections defined in paragraphs 
(b)(1) through (b)(12) of this section, if applicable, should 
be preceded by a section heading in uppercase and without underlining 
or bold type.

Special procedures for the presentation of large 
tables, computer program listings and certain biosequences 
on compact discs are set forth in 37 CFR 
1.52(e). Use of compact discs is desirable in view of 
the lengthy data listings being submitted as part of the 
disclosure in some patent applications. Such listings 
are often several hundred pages or more in length. By 
filing and publishing such data listings on compact 
disc rather than on paper, substantial cost savings can 
result to the applicants, the public, and the U.S. Patent 
and Trademark Office.

BACKGROUND

A compact disc submitted under 37 CFR 1.52(e)
must either be a CD-ROM or a CD-R. A CD-ROM is 
made by a process of pressing the disc from a master 
template; the data cannot be erased or rewritten. A 
CD-R is a compact disc that has a recording medium 
only capable of writing once. CD-RW type media 
which are erasable and rewriteable are not acceptable. 
Limiting the media types to CD-ROM and CD-R 
media will ensure the longevity and integrity of the 
data submitted. CD-R discs must be finalized so that 
they are closed to further writing to the CD-R. The 
files stored on the compact disc must contain only 
ASCII characters. No non-ASCII characters or proprietary 
file formats are permitted. A text viewer is recommended 
for viewing ASCII files. While virtually 
any word processor may be used to view an ASCII 
file, care must be taken since a word processor will 
often not distinguish ASCII and non-ASCII files 
when displayed. For example, a word processor normally 
does not display hidden proprietary non-ASCII 
characters used for formatting when viewing a non-
ASCII word processor file.

Compact disc(s) filed on the date that the application 
was accorded a filing date are to be treated as part 
of the originally filed disclosure even if the requisite 
“incorporation by reference” statement (see 37 CFR 
1.77(b)(5)) is omitted. Similarly, if a preliminary 
amendment that accompanies the application when it 
is filed in the Office is identified in the oath or declaration, 
and the preliminary amendment includes compact 
disc(s), the compact disc(s) will be treated as part 
of the original disclosure. The compact disc(s) is considered 
part of the original disclosure by virtue of its 
inclusion with the application on the date the application 
is accorded a filing date. The incorporation by 
reference statement of the material on the compact 
disc is required to be part of the specification to allow 
the Office the option of separately printing the material 
on compact disc. The examiner should require 
applicant(s) to insert this statement if it is omitted or 
the examiner may insert the statement by examiner’s 
amendment at the time of allowance.

37 CFR 1.52(e)(3)(ii) requires that each compact 
disc must be enclosed in a hard compact disc case 
within an unsealed padded and protective mailing 
envelope and accompanied by a transmittal letter on 
paper in accordance with 37 CFR 1.52(a). The transmittal 
letter must list for each compact disc the 
machine format (e.g., IBM-PC, Macintosh), the operating 
system compatibility (e.g., MS-DOS, MS-Windows, 
Macintosh, Unix), a list of files contained on 
the compact disc including their names, sizes in bytes, 
and dates of creation, plus any other special information 
that is necessary to identify, maintain, and interpret 
the information on the compact disc. Compact 
discs submitted to the Office will not be returned to 
the applicant.

All compact discs submitted under 37 CFR 1.52(e)
must be submitted in duplicate labeled as “copy 1” 
and “copy 2” respectively. If more than one compact 
disc is required to hold all of the information, each 
compact disc must be submitted in duplicate to form 
two sets of discs: one set labeled “copy 1” and a sec







ond set labeled “copy 2.” Both disc copies should initially 
be routed to the Office of Initial Patent 
Examination (OIPE). The compact discs will be 
checked by OIPE for viruses, readability, the presence 
of non-ASCII files, and compliance with the file and 
disc labeling requirements. OIPE will retain one copy 
of the discs and place the other copy in a holder fastened 
into the application file jacket. For Image File 
Wrapper (IFW) processing, see IFW Manual sections 
2.2 and 3.6. In the event that there is not a complete 
set of files on both copies of the originally filed discs, 
OIPE will retain the originally filed discs and send a 
notice to the applicant to submit an additional complete 
copy. For provisional applications, OIPE will 
provide applicant notification and, where appropriate, 
require correction for virus infected compact discs, 
unreadable compact discs (or unreadable files 
thereon), and missing duplicate discs. An amendment 
to the material on a compact disc must be done by 
submitting a replacement compact disc with the 
amended file(s). The amendment should include a 
corresponding amendment to the description of the 
compact disc and the files contained on the compact 
disc in the paper portion of the specification. A 
replacement compact disc containing the amended 
files must contain all of the files of the original compact 
disc that were not amended. This will insure that 
the Office, printer, and public can quickly access all 
of the current files in an application or patent by referencing 
only the latest set of compact discs.

Compact discs should be stored in the compact disc 
holder provided in each application file. The compact 
discs, especially the non-label side, should not be 
scratched, marked or otherwise altered or deformed. 
Compact discs and application files containing compact 
discs should not be stored in areas exposed to 
heat and humidity that might damage the discs.

If a compact disc becomes damaged or lost from 
the file wrapper, OIPE will make a duplicate replacement 
copy of the disc from the copy retained in OIPE. 
At time of allowance, if a replacement disc is 
required, the application file and replacement request 
should be forwarded to OIPE to provide the replacement 
disc.

Examiners may view the files on the application 
compact disc using virtually any text reader or the MS 
Word word processor software installed on their 
workstation. Special text viewing software will be 
provided on examiner workstations in Technology 
Centers that receive ASCII files that are not readily 
readable using the MS Word word processor software.

====608.05(a)Deposit of Computer Program Listings [R-5]====

37 CFR 1.96. Submission of computer program listings.

(a)General. Descriptions of the operation and general content 
of computer program listings should appear in the description 
portion of the specification. A computer program listing for the 
purpose of this section is defined as a printout that lists in appropriate 
sequence the instructions, routines, and other contents of a 
program for a computer. The program listing may be either in 
machine or machine-independent (object or source) language 
which will cause a computer to perform a desired procedure or 
task such as solve a problem, regulate the flow of work in a computer, 
or control or monitor events. Computer program listings 
may be submitted in patent applications as set forth in paragraphs 
(b) and (c) of this section.

(b)Material which will be printed in the patent: If the computer 
program listing is contained in 300 lines or fewer, with each 
line of 72 characters or fewer, it may be submitted either as drawings 
or as part of the specification.

(1)Drawings. If the listing is submitted as drawings, it 
must be submitted in the manner and complying with the requirements 
for drawings as provided in § 1.84. At least one figure 
numeral is required on each sheet of drawing.

(2)Specification.

(i)If the listing is submitted as part of the specification, 
it must be submitted in accordance with the provisions of § 
1.52.

(ii)Any listing having more than 60 lines of code that 
is submitted as part of the specification must be positioned at the 
end of the description but before the claims. Any amendment 
must be made by way of submission of a substitute sheet.



(c)As an appendix which will not be printed: Any computer 
program listing may, and any computer program listing having 
over 300 lines (up to 72 characters per line) must, be submitted on 
a compact disc in compliance with § 1.52(e). A compact disc containing 
such a computer program listing is to be referred to as a 
“computer program listing appendix.” The “computer program 
listing appendix” will not be part of the printed patent. The specification 
must include a reference to the “computer program listing 
appendix” at the location indicated in § 1.77(b)(5).

(1)Multiple computer program listings for a single application 
may be placed on a single compact disc. Multiple compact 
discs may be submitted for a single application if necessary. A 
separate compact disc is required for each application containing a 
computer program listing that must be submitted on a “computer 
program listing appendix.” 

(2)The “computer program listing appendix” must be 
submitted on a compact disc that complies with § 1.52(e) and the 
following specifications (no other format shall be allowed):

(i)Computer Compatibility: IBM PC/XT/AT, or compatibles, 
or Apple Macintosh;

(ii)Operating System Compatibility: MS-DOS, MS-
Windows, Unix, or Macintosh;

(iii)Line Terminator: ASCII Carriage Return plus 
ASCII Line Feed;

(iv)Control Codes: the data must not be dependent on 
control characters or codes which are not defined in the ASCII 
character set; and

(v)Compression: uncompressed data.

Special procedures for presentation of computer 
program listings in the form of compact disc files in 
U.S. national patent applications are set forth in 
37 
CFR 1.96. Use of compact disc files is desirable in 
view of the number of computer program listings 
being submitted as part of the disclosure in patent 
applications. Such listings are often several hundred 
pages in length. By filing and publishing such computer 
program listings on compact discs rather than on 
paper, substantial cost savings can result to the applicants, 
the public, and the U.S. Patent and Trademark 
Office. 

I.BACKGROUND

A computer program listing, as used in these rules, 
means the printout that lists, in proper sequence, the 
instructions, routines, and other contents of a program 
for a computer. The listing may be either in machine 
or machine-independent (object or source) programming 
language which will cause a computer to perform 
a desired task, such as solving a problem, 
regulating the flow of work in computer, or controlling 
or monitoring events. The general description of 
the computer program listing will appear in the specification 
while the computer program listing may 
appear either directly or as a computer program listing 
on compact disc appendix to the specification and be 
incorporated into the specification by reference. 






Copies of publicly available computer program listings 
are available from the U.S. Patent and Trademark 
Office on paper and on compact disc at the cost set 
forth in 37 CFR 1.19(a).

II.DISCUSSION OF THE BACKGROUND 
AND MAJOR ISSUES INVOLVED

The provisions of 37 CFR 1.52 and 37 CFR 1.84for submitting specifications and drawings on paper 
have been found suitable for most patent applications. 
However, when lengthy computer program listings 
must be disclosed in a patent application in order to 
provide a complete disclosure, use of paper copies can 
become burdensome. The cost of printing long computer 
programs in patent documents is also very 
expensive to the U.S. Patent and Trademark Office. 
Under 37 CFR 1.96, several different methods for 
submitting computer program listings, including the 
use of compact discs, are set forth. A computer program 
listing contained on three hundred printout lines 
or less may be submitted either as drawings (in compliance 
with 37 CFR 1.84), as part of the written specification 
(in compliance with 37 CFR 1.52), or on 
compact disc (in compliance with 37 CFR 1.52(e)). A 
computer program listing contained on three hundred 
and one (301) printout lines or more must be submitted 
as ASCII files on compact discs (in compliance 
with 37 CFR 1.96(c)).

A computer program listing of more than three hundred 
lines will not be printed in any patent application 
publication, patent, or Statutory Invention Registration. 
See 37 CFR 1.96(c).


III.OTHER INFORMATION

A computer program listing on compact disc filed 
with a patent application will be referred to as a Computer 
Program Listing Appendix on compact disc and 
will be identified as such on the front page of the 
patent but will not be part of the printed patent. “Computer 
Program Listing Appendix on compact disc” 
denotes the total computer program listing files contained 
on all compact discs. The face of the file wrapper 
will bear a label to denote that an appendix on 
compact disc is included in the application. A statement 
must be included in the specification to the 
effect that a computer program listing appendix on 
compact disc is included in the application. The specification 
entry must appear at the beginning of the 
specification immediately following any cross-reference 
to related applications. 37 CFR 1.77(b)(5). 
When an application containing compact discs is 
received in the Office of Initial Patent Examination 
(OIPE), a special envelope will be affixed to the right 
side of the file wrapper underneath all papers, and the 
compact discs inserted therein. For Image File Wrapper 
(IFW) processing, see IFW Manual section 3.6. 
The application file will then proceed on its normal 
course. 

IV.TEMPORARY CONTINUATION OF MICROFICHE 
PRACTICE UNTIL MARCH 
1, 2001

The Office provided for the continuation of prior 
microfiche appendix practice for computer listings 
until March 1, 2001. All computer listings as part of 
the application disclosure filed prior to March 2, 2001 
that are in conformance with the microfiche appendix 
rules below may rely on the microfiche and need not 
submit a computer program listing appendix on compact 
disc; all computer listings as part of the application 
disclosure not in conformance with the 
microfiche appendix rules below must conform to the 
requirements of 37 CFR 1.52 and 37 CFR 1.96 as set 
forth above.

The prior microfiche practice continued through 
March 1, 2001 to accommodate applicants who 
incurred the time and expense of preparing microfiche. 
Those applicants with computer program listings 
in the disclosure who have not prepared 
microfiche will generally incur significantly less time 
and expense creating compact disc files than creating 
microfiche.

All computer listings submitted on microfiche 
through March 1, 2001, must conform to the requirements 
of former 37 CFR 1.96(c), as reproduced 
below: 

Former 37 CFR 1.96. Submission of computer program 
listings.



(c)As an appendix which will not be printed. If a 
computer 
program listing printout is eleven or more pages 
long, applicants 
must submit such listing in the form 
of 

microfiche, referred to in 
the specification (see §

1.77(a)(6)). Such microfiche filed with a 
patent application is to be referred to as a “microfiche appendix.” 
The “microfiche appendix” will not be part of the printed patent. 
Reference in the application to the “microfiche appendix” must be 
made at the beginning of the specification at the location indicated 
in § 1.77(a)(6). Any amendments thereto must be made by way of 
revised microfiche.

(1)Availability of appendix. Such computer program listings 
on microfiche will be available to the public for inspection, 
and microfiche copies thereof will be available for purchase with 
the file wrapper and contents, after a patent based on such application 
is granted or the application is otherwise made publicly available.


(2)Submission requirements. Except as modified or clarified 
in this paragraph (c)(2), computer-generated information submitted 
as a “microfiche appendix” to an application shall be in 
accordance with the standards set forth in 36 CFR Part 1230 
(Micrographics).

(i)Film submitted shall be a first generation (camera 
film) negative appearing microfiche (with 

emulsion on the back 
side of the film when viewed with the images right-reading).

(iii)At least the left-most third (50 mm. x 12 mm.) of 
the header or title area of each microfiche submitted shall be clear 
or positive appearing so that the Patent and Trademark Office can 
apply an application number and filing date thereto in an eye-
readable form. The middle portion of the header shall be used by 
applicant to apply an eye-readable application identification such 
as the title and/or the first inventor's name. The attorney's docket 
number may be included. The final right-hand portion of the 
microfiche shall contain sequence in formation for the microfiche, 
such as 1 of 4, 2 of 4, etc.

(ii)Reduction ratio of microfiche submitted should be 
24:1 or a similar ratio where variation from said ratio is required 
in order to fit the documents into the image area of the microfiche 
format used.

(iv)Additional requirements which apply specifically 
to microfiche of filmed paper copy:

(A)The first frame of each microfiche submitted 
shall contain a test target.

(B)The second frame of each microfiche submitted 
must contain a fully descriptive title and the inventor's name as 
filed.






(C)The pages or lines appearing on the microfiche 
frames should be consecutively numbered.

(D)Pagination of the microfiche frames shall be 
from left to right and from top to bottom.

(E)At a reduction of 24:1, resolution of the original 
microfilm shall be at least 120 lines per mm. (5.0 target).

(F)An index, when included, should appear in the 
last frame (lower-right hand corner when data is right-reading) of 
each microfiche.

(v)Microfiche generated by Computer Output Microfilm.


(A)The first frame of each microfiche submitted 
should contain a resolution test frame.

(B)The second frame of each microfiche submitted 
must contain a fully descriptive title and the inventor's name as 
filed.

(C)The pages or lines appearing on the microfiche 
frames should be consecutively numbered.

(D)It is preferred that pagination of the microfiche 
frames be from left to right and top to bottom but the alternative, 
i.e., from top to bottom and from left to right, is also acceptable.

(E)An index, when included, should appear on the 
last frame (lower-right hand corner when data is right reading) of 
each microfiche.



A microfiche filed with a patent application will be 
referred to as a “Microfiche Appendix,” and will be 
identified as such on the front page of the patent but 
will not be part of the printed patent. “Microfiche 
Appendix” denotes the total microfiche, whether only 
one or two or more. One microfiche is equivalent to a 
maximum of either 63 (9x7) or 98 (14x7) frames 
(pages), or less. The face of the file wrapper will bear 
a label to denote that a Microfiche Appendix is 
included in the application. For IFW processing, see 
IFW Manual section 3.6. A statement must be 
included in the specification to the effect that a microfiche 
appendix is included in the application. The 
specification entry must appear at the beginning of the 
specification immediately following any cross-reference 
to related applications. When an application containing 
microfiche is received in the Office of Initial 
Patent Examination (OIPE), a special envelope will 
be affixed to the right side of the file wrapper underneath 
all papers, and the microfiche inserted therein. 
For IFW processing, see IFW Manual section 2.2. The 
application file will then proceed on its normal 
course. 

Form paragraph 6.64.04 may be used to notify 
applicant of an unacceptable microfiche appendix.

¶ 6.64.04 “Microfiche Appendix” Unacceptable

The computer program listing filed on [1] as a “microfiche 
appendix” is unacceptable. A computer program listing conforming 
to the requirements of 37 CFR 1.96 is required.

Examiner Note:

1. This form paragraph should be used if a “microfiche appendix” 
was filed after March 1, 2001 or if a “microfiche appendix” 
filed on or before March 1, 2001 was not in compliance with 
former rule 37 CFR 1.96(c). See MPEP § 608.05(a). 

2.In bracket 1, insert the date the “microfiche appendix” was 
filed.

608.05(b)Compact Disc Submissions of 
Large Tables [R-3]

37 CFR 1.58. Chemical and mathematical formulae and 
tables.



(b)Tables that are submitted in electronic form (§§ 
1.96(c) and 1.821(c)) must maintain the spatial relationships (e.g., 
alignment of columns and rows) of the table elements when displayed 
so as to visually preserve the relational information they 
convey. Chemical and mathematical formulae must be encoded to 
maintain the proper positioning of their characters when displayed 
in order to preserve their intended meaning.



The provisions of 37 CFR 1.52 and 37 CFR 1.58for submitting specifications and tables on paper have 
been found suitable for most patent applications. 
However, when lengthy tables must be disclosed in a 
patent application in order to provide a complete disclosure, 
use of paper copies can become burdensome. 
The cost of printing long tables in patent documents is 
also very expensive to the U.S. Patent and Trademark 
Office. In the past, all disclosures forming part of a 
patent application were presented on paper with the 
exception of microorganisms and computer program 
listings. Under 37 CFR 1.58, several different methods 
for submitting large tables, including the use of 
CD-ROM and CD-R, are set forth. If CD-R discs are 
used, 37 CFR 1.52(e)(3)(i) requires that the CD-R 
discs to be finalized so that they are closed to further 
writing to the CD-R.

The files stored on the compact disc containing the 
table must contain only ASCII characters. No special 
formatting characters or proprietary file formats are 
permitted. Accordingly, great care must be taken so 
that the spatial arrangement of the data in rows and 
columns is maintained in the table when the file is 
opened for viewing at the Office. This will allow the 






table to viewed with virtually any text viewer. A single 
table contained on fifty pages or less must be submitted 
either as drawings (in compliance with 37 CFR 
1.84) or as part of the specification in paper (in compliance 
with 37 CFR 1.52). 

A single table contained on 51 pages or more , or 
if there are multiple tables in an application and the 
total number of pages of the tables exceeds one hundred 
pages, the tables may be submitted on a CD-
ROM or CD-R (in compliance with 37 CFR 1.52(e)
and 37 CFR 1.58). A table page is defined in 37 CFR 
1.52(e)(1)(iii) as a page printed on paper in conformance 
with 37 CFR 1.52(b) and 1.58(c). The presentation 
of a subheading to divide a large table into 
smaller sections of less than 51 pages should not be 
used to prevent an applicant from submitting the table 
on a compact disc unless the subdivided tables are 
presented as numerous files on the compact disc so as 
to lose their relationship to the overall large table.

Tables in landscape orientation should be identified 
as landscape orientation in the transmittal letter 
accompanying the compact disc to allow the Office to 
properly upload the tables into the Image File Wrapper 
(IFW) or other automated systems. 37 CFR 
1.52(e)(3)(ii). Most tables filed with patent applications 
are intended to be rendered in portrait mode. 
Accordingly, filings without an identification of landscape 
mode will be rendered as portrait mode tables 
by the Office.

If tables on more than two hundred consecutive 
pages, or large numbers of tables (lengthy tables) are 
submitted on a CD as provided in 37 CFR 1.52(e), or 
in an electronic format in response to a specific 
request from the Office of Patent Publication, these 
lengthy tables will not be published as part of a patent 
document (e.g., patent, patent application publication 
or Statutory Invention Registration (SIR)). The 
lengthy tables will be published separately on the 
sequence homepage of the USPTO Internet web site 
(http://seqdata.uspto.gov) as an XML file. See, for 
example, patent application publication nos. US 2003/
0235811 A1 and US 2003/0237110 A9. 

When the lengthy tables are separately published 
on the USPTO Internet web site, there will be a standardized 
“Lengthy Table” statement, in the patent 
document following of the detailed description (see 
37 CFR 1.77(b)(8)). 

For a patent application publication, the following 
page-wide text would appear:

LENGTHY TABLE

The patent application contains a lengthy table section. 
A copy of the table is available in electronic 
form from the USPTO web site (http://seqdata.
uspto.gov/?pageRequest=docDetail&
docID=20047654321). An electronic copy of the 
table will also be available from the USPTO upon 
request and payment of the fee set forth in 37 CFR 
1.19(b)(3).

For a patent, the following page-wide text would 
appear:

LENGTHY TABLE

The patent contains a lengthy table section. A copy 
of the table is available in electronic form from the 
USPTO web site (http://seqdata.uspto.gov/?pageRequest=
docDetail&docID=7654321B1). An electronic 
copy of the table will also be available from the 
USPTO upon request and payment of the fee set forth 
in 37 CFR 1.19(b)(3).

For a SIR, the following page-wide text would 
appear:

LENGTHY TABLE

The statutory invention registration contains a 
lengthy table section. A copy of the table is available 
in electronic form from the USPTO web site (http://
seqdata.uspto.gov/?pageRequest=docDetail&
docID=H0009999H1). An electronic copy of the 
table will also be available from the USPTO upon 
request and payment of the fee set forth in 37 CFR 
1.19(b)(3).

The Office discourages the embedding of a lengthy 
table in the specification of a patent application. If a 
lengthy table is embedded in the specification of a 
patent application, and if the lengthy table is available 
in an electronic form (either XML or a format convertible 
to XML), when the patent, patent application 
publication or SIR is published, the following single-
column statement will be inserted in place of each 
replaced table in the document.






LENGTHY TABLE

Lengthy table referenced here. Please refer to the 
end of the specification for access instructions.

Form paragraphs 6.63.01 and 6.63.02 may be used 
to notify applicant of corrections needed to comply 
with the requirements of 37 CFR 1.52(e) and 37 CFR 
1.58(b) with respect to tables.

====608.05(c)Compact Disc Submissions of Biosequences====

Filing of biosequence information on compact disc 
is now permitted in lieu of filing on paper. See MPEP 
§ 2420 and § 2422.03.