37 CFR § 1.53 — Application number, filing date, and (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.53 Application number, filing date, and
This page consolidates MPEP guidance interpreting 37 CFR § 1.53, including 1068 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
This section covers the process and requirements for petitions to establish the filing date of patent applications, focusing on provisional applications and their necessary components such as Office form SB/16 and cover sheets.
What this section covers
- This section defines the scope of petitions for establishing the filing date of patent applications, with a focus on provisional applications.
- It identifies the core topic of guidance, which includes ensuring provisional applications include an Office form SB/16.
Key obligations
- Ensure that provisional applications include an Office form SB/16 to satisfy the primary requirement.
- Include a cover sheet in provisional applications as an additional required element.
- Comply with the filing date petitions under 37 CFR 1.53 for provisional applications.
Practice notes
- Ensure all required forms and documents, including Office form SB/16 and cover sheets, are included with provisional applications.
- Avoid missing the cover sheet requirement for provisional applications to prevent compliance issues.
Official MPEP § 1.53 — Application number, filing date, and
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.53 Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013. See * below for additional applicability notes.]
- (a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes.
- (b)
Application filing requirements— Nonprovisional
application.
The filing date of an application for
patent filed under this section, other than an application for a
design patent or a provisional application under paragraph (c) of
this section, is the date on which a specification, with or without
claims, is received in the Office. The filing date of an
application for a design patent filed under this section, except
for a continued prosecution application under paragraph (d) of this
section, is the date on which the specification as prescribed by
35 U.S.C. 112
,
including at least one claim, and any required drawings are
received in the Office. No new matter may be introduced into an
application after its filing date. A continuing application, which
may be a continuation, divisional, or continuation-in-part
application, may be filed under the conditions specified in
35 U.S.C. 120
,
121
,
365(c)
, or
386(c)
and §
1.78
.
- (1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
- (2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
- (c)
Application filing requirements — Provisional
application.
The filing date of a provisional
application is the date on which a specification, with or without
claims, is received in the Office. No amendment, other than to make
the provisional application comply with the patent statute and all
applicable regulations, may be made to the provisional application
after the filing date of the provisional application.
- (1) A provisional application must also include the cover sheet required by § 1.51(c)(1) , which may be an application data sheet (§ 1.76 ), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.
- (2) An application for patent filed under
paragraph (b) of this section may be converted to a
provisional application and be accorded the original filing
date of the application filed under paragraph (b) of this
section. The grant of such a request for conversion will not
entitle applicant to a refund of the fees that were properly
paid in the application filed under paragraph (b) of this
section. Such a request for conversion must be accompanied by
the processing fee set forth in §
1.17(q)
and be filed prior to the earliest of:
- (i) Abandonment of the application filed under paragraph (b) of this section;
- (ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
- (iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
- (3) A provisional application filed under
paragraph (c) of this section may be converted to a
nonprovisional application filed under paragraph (b) of this
section and accorded the original filing date of the
provisional application. The conversion of a provisional
application to a nonprovisional application will not result
in either the refund of any fee properly paid in the
provisional application or the application of any such fee to
the filing fee, or any other fee, for the nonprovisional
application. Conversion of a provisional application to a
nonprovisional application under this paragraph will result
in the term of any patent to issue from the application being
measured from at least the filing date of the provisional
application for which conversion is requested. Thus,
applicants should consider avoiding this adverse patent term
impact by filing a nonprovisional application claiming the
benefit of the provisional application under
35 U.S.C.
119(e)
, rather than converting the
provisional application into a nonprovisional application
pursuant to this paragraph. A request to convert a
provisional application to a nonprovisional application must
be accompanied by the fee set forth in §
1.17(i)
and an amendment including at least one claim as prescribed
by
35 U.S.C.
112(b)
, unless the provisional
application under paragraph (c) of this section otherwise
contains at least one claim as prescribed by
35 U.S.C.
112(b)
. The nonprovisional application
resulting from conversion of a provisional application must
also include the filing fee, search fee, and examination fee
for a nonprovisional application, and the surcharge required
by §
1.16(f)
if either the basic filing fee for a nonprovisional
application or the inventor’s oath or declaration was not
present on the filing date accorded the resulting
nonprovisional application (
i.e., the
filing date of the original provisional application). A
request to convert a provisional application to a
nonprovisional application must also be filed prior to the
earliest of:
- (i) Abandonment of the provisional application filed under paragraph (c) of this section; or
- (ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
- (4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 , 365(a) , or 386(a) or § 1.55 , or to the benefit of an earlier filing date under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a) may be made in a design application based on a provisional application. A provisional application disclosing nucleotide and/or amino acid sequences is not required to include a separate sequence listing; however, if submitted in a provisional application filed on or after July 1, 2022, any submission of nucleotide and/or amino acid sequence data must be by way of a “Sequence Listing XML” in compliance with §§ 1.831 through 1.834 .
- (d)
Application filing requirements — Continued prosecution
(nonprovisional) application.
- (1) A continuation or divisional application
(but not a continuation-in-part) of a prior nonprovisional
application may be filed as a continued prosecution
application under this paragraph, provided that:
- (i) The application is for a design patent;
- (ii) The prior nonprovisional application is a design application, but not an international design application, that is complete as defined by § 1.51(b) , except for the inventor’s oath or declaration if the application is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in § 1.53(f)(3)(i) ; and
- (iii) The application under this
paragraph is filed before the earliest of:
- (A) Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
- (B) Abandonment of the prior application; or
- (C) Termination of proceedings on the prior application.
- (2) The filing date of a continued
prosecution application is the date on which a request on a
separate paper for an application under this paragraph is
filed. An application filed under this paragraph:
- (i) Must identify the prior application;
- (ii) Discloses and claims only subject matter disclosed in the prior application;
- (iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
- (iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and the inventor’s oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
- (v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
- (3) The filing fee, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b) , the search fee as set forth in § 1.16(l) , and the examination fee as set forth in § 1.16(p) .
- (4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48 .
- (5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125 .
- (6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
- (7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
- (8) In addition to identifying the
application number of the prior application, applicant should
furnish in the request for an application under this
paragraph the following information relating to the prior
application to the best of his or her ability:
- (i) Title of invention;
- (ii) Name of applicant(s); and
- (iii) Correspondence address.
- (9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.
- (1) A continuation or divisional application
(but not a continuation-in-part) of a prior nonprovisional
application may be filed as a continued prosecution
application under this paragraph, provided that:
- (e)
Failure to meet filing date requirements.
- (1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to correct the filing error. If, however, a request for an application under paragraph (d) of this section does not meet the requirements of that paragraph because the application in which the request was filed is not a design application, and if the application in which the request was filed was itself filed on or after June 8, 1995, the request for an application under paragraph (d) of this section will be treated as a request for continued examination under § 1.114 .
- (2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f) . In the absence of a timely (§ 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected.
- (3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely (§ 1.181(f) ) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n) , will be refunded.
- (f)
Completion of application subsequent to filing —
Nonprovisional (including continued prosecution or reissue)
application.
- (1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, search fee, or examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include at least one claim or the inventor’s oath or declaration (§§ 1.63 , 1.64 , 1.162 or 1.175 ), and the applicant has provided a correspondence address (§ 1.33(a) ), the applicant will be notified and given a period of time within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by § 1.16(f) , to avoid abandonment.
- (2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee, search fee, examination fee, at least one claim, or the inventor’s oath or declaration, and the applicant has not provided a correspondence address (§ 1.33(a) ), the applicant has three months from the filing date of the application within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge required by § 1.16(f) , to avoid abandonment.
- (3) The inventor’s oath or declaration
in an application under §
1.53(b)
must also be filed within the
period specified in paragraph (f)(1) or (f)(2) of this
section, except that the filing of the inventor’s oath or
declaration may be postponed until the application is
otherwise in condition for allowance under the conditions
specified in paragraphs (f)(3)(i) and (f)(3)(ii) of this
section.
- (i) The application must be an
original (non-reissue) application that contains an
application data sheet in accordance with §
1.76
identifying:
- (A) Each inventor by his or her legal name;
- (B) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
- (ii) The applicant must file each required oath or declaration in compliance with § 1.63 , or substitute statement in compliance with § 1.64 , no later than the date on which the issue fee for the patent is paid. If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63 , or substitute statement in compliance with § 1.64 , executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63 , or substitute statement in compliance with § 1.64 , no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c) ). The Office may dispense with the notice provided for in paragraph (f)(1) of this section if each required oath or declaration in compliance with § 1.63 , or substitute statement in compliance with § 1.64 , has been filed before the application is in condition for allowance.
- (i) The application must be an
original (non-reissue) application that contains an
application data sheet in accordance with §
1.76
identifying:
- (4) If the excess claims fees required by § 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by § 1.16(h) , (i) , and (j) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under § 1.16(s) , the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
- (5) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuation-in-part applications under paragraph (b) of this section. See § 1.63(d) concerning the submission of a copy of the inventor’s oath or declaration from the prior application for a continuing application under paragraph (b) of this section.
- (6) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
- (g)
Completion of application subsequent to filing —
Provisional application.
- (1) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d) ), and applicant has provided a correspondence address (§ 1.33(a)) , applicant will be notified and given a period of time within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)) , and pay the surcharge required by § 1.16(g) to avoid abandonment.
- (2) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d) ), and applicant has not provided a correspondence address (§ 1.33(a) ), applicant has two months from the filing date of the application within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1) ), and pay the surcharge required by § 1.16(g) to avoid abandonment.
- (3) If the application size fee required by § 1.16(s) (if any) is not paid on filing, the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
- (4) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
- (h) Subsequent treatment of application — Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts, complying with the rules relating thereto, are received, except that the inventor’s oath or declaration may be filed when the application is otherwise in condition for allowance pursuant to paragraph (f)(3) of this section and minor informalities may be waived subject to subsequent correction whenever required.
- (i) Subsequent treatment of application – Provisional application. A provisional application for a patent filed under paragraph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1) .
[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; paras. (b) and (d), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (c), 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; paras. (c) and (d), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; paras. (b) and (c), 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)-(e) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (d) revised, 63 FR 5734, Feb. 4, 1998, effective Feb. 4, 1998 (adopted as final, 63 FR 36184, Jul. 2, 1998); paras. (c)(3), (c)(4) and (d) revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (paras. (c)(4) and (d) adopted as final, 65 FR 50092, Aug. 16, 2000); para. (c)(3) revised, 65 FR 50092, Aug. 16, 2000, effective Aug. 16, 2000; paras. (c)(1), (c)(2), (d)(4), (e)(2), (f), and (g) revised and para. (d)(10) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c)(4) revised, 65 FR 78958, Dec. 18, 2000; para. (d)(9) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (d)(1), (d)(3) and (e)(1) revised, 68 FR 32376, May 30, 2003, effective July 14, 2003; para. (d)(9) deleted and para. (d)(10) redesignated as para. (d)(9), 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (e)(2) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras (c)(3), (f) and (g) revised, 70 FR 3880, Jan. 27, 2005, effective Dec., 8, 2004; paras. (d)(3) and (f)(5) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; paras. (b) and (c)(4) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); paras. (b) and (c)(4) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); introductory text of paras. (c) and (c)(3), and paras. (d)(2)(iv), (f), and (h) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para.(b) introductory text, paras. (c)(2)(ii)-(iii) and (c)(4) revised, and para.(j) removed, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; paras. (b), (c) and (f) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (d)(1)(ii) revised, 79 FR 12384, Mar. 5, 2014, effective Mar. 5, 2014(adopted as final, 79 FR 68121, Nov. 14, 2014); para. (b) introductory text and paras. (c)(4) and (d)(1)(ii) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; para. (c)(4) revised, 87 FR 30806, May 20, 2022, effective July 1, 2022]
[ * Paragraphs (b), (c), (f) and (h) above include changes having limited applicability as follows:
The changes to para. (c)(4) effective July 1, 2022 are applicable to all applications irrespective of filing date.
The changes to paras. (b) and (c) effective Dec. 18, 2013 and May 13, 2015 are applicable only to patent applications filed on or after Dec. 18, 2013. See § 1.53 (pre‑PLT(AIA)) for paras. (b) and (c) otherwise in effect; and
The changes to para. (f) effective Dec. 18, 2013 and the changes to para. (h) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.53 (pre‑AIA) for paras. (f) and (h) otherwise in effect.]
- Abandonment
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