February 01, 2007

This USPTO announced this week that it is revising its procedure regarding omitted items in nonprovisional patent applications. Currently, when an applicant files a nonprovisional application (under 35 U.S.C. § 111(a)), the application is initially reviewed by the Office of Initial Patent Examination (OIPE) to determine whether or not the application is complete. If items are missing (like specification pages, drawings, claim sheets, and the like), a “Notice of Omitted Item(s) in a Nonprovisional Application” will be mailed to the applicant to advise the applicant that a filing date has been granted but that items are missing and need to be corrected. Three options for correction will then be provided, and if the applicant does not respond by filing a petition to one of two of the options, the application as deposited is constructively elected. This current practice also does not require the applicant to respond within a specified period of time, often leading to responses after examination of the application has started and/or after the application has published.

The revised procedure will be similar to the current procedure, but there will be a specified time period to respond, and the time period will be extendible under 37 C.F.R. § 1.136. Three options for responding to the Notice of Omitted Items will continue to be provided, namely (1) to petition (under 37 C.F.R. § 1.53(e)) for the date of deposit, asserting that the alleged missing items were indeed deposited, accompanied by evidence of the deposit and the petition fee, (2) to petition for a later filing date accompanied by a supplemental oath or declaration under 37 C.F.R. § 1.63 and 37 C.F.R. § 1.64 that makes reference to the item, the petition falling under 37 C.F.R. § 1.182 along with the fee and the specified submission date, and (3) to merely accept the application as initially deposited with the USPTO. Responding by either of the first two options will be in the same fashion as initially prescribed (but now within the specified time period), and responding by the third option will now require the appropriate amendment to be filed, like a substitute specification. To accept the application as deposited, the applicant must (and without adding any new matter – 35 U.S.C. § 132(a)) submit one or more of the following:

(a) if a page of the specification is missing, a substitute specification and claim set to properly amend the specification, consecutively renumber the pages, and cancel incomplete sentence, in compliance with 37 C.F.R. § 1.121(b)(3) and 37 C.F.R. § 1.125;

(b) if a figure of the drawings is missing, replacement drawing sheets, a substitute specification (without claims) to properly address omitted or relabeled drawings, in compliance with 37 C.F.R. § 1.121(b)(3), 37 C.F.R. § 1.121(d) and 37 C.F.R. § 1.125;

(c) if a page of claims is missing, a replacement claim listing and any necessary claim amendments under 37 C.F.R. § 1.121(c);

(d) if the compact disc is missing or is unreadable, a substitute specification (without claims) deleting references to the compact disc and its files, in compliance with 37 C.F.R. § 1.121(b)(3) and 37 C.F.R. § 1.125; and

(e) if any files on the compact disc are missing or unreadable, the same as in (d) above and a replacement transmittal letter, in compliance with 37 C.F.R. § 1.52(e)(3)(ii), listing all of the files except for the files that are missing or unreadable.

Instructions for responding when the applicant wishes to add subject matter are also provided within the USPTO notice (link below). In addition, if the applicant “is relying on an incorporation by reference under 37 CFR 1.57 to add the omitted subject matter, then applicant must also comply with the requirements of 37 CFR 1.57.”

The USPTO notice further advises that any Notices of Omitted Items will now be considered as “a notice or action by the Office making a rejection, objection, argument, or other request within the meaning of 35 U.S.C. 154(b)(2)(C)(ii) or 37 CFR 1.704(b),” noting in particular that failure to timely respond within the initial three month period “would be subject to a reduction of patent term adjustment under 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b).” Specific provisions to the MPEP will be revised in due course to reflect this revised procedure. Please note that these procedural revisions only apply to nonprovisional applications, and the procedures regarding missing parts of provisional applications will not change.

USPTO Notice of Revised Procedure:


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I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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