(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, 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.

(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.

(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.
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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.

(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.

(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.

(g) Completion of application subsequent to filing—Provisional application.
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(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.

(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).

If the provisional application papers do not include at least a specification containing a description and a drawing, if necessary under 35 U.S.C. 113 (first sentence) (for applications filed prior to March 18, 2013) or if the submitted application papers are too informal to be given a filing date, the case is held in OPAP as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.

Such incompleteness may consist of the omission of any one of the following parts of an application. The component parts of a provisional application necessary to obtain a filing date are:

Even though an application purports to include the component part(s) necessary to obtain a filing date, the application will still be held to be incomplete and a filing date will be refused if the component parts fail to satisfy the requirements set forth above. For example, if the documents purporting to be a specification are so obviously informal and incoherent that they would clearly not constitute a specification as required by 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph, and 37 CFR 1.71, the application would not be acceptable and would not be accorded a filing date until corrections are made. The filing date of the application would be the date the corrections were made. A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b). See 37 CFR 1.53(c)(1).

NOTE: 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. See 37 CFR 1.53(c).

(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, the search fee, or the 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 pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by § 1.16(f) to avoid abandonment.

(f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application.
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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.

(f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application.
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(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.
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(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.

Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004)), at least one claim (for applications filed on or after December 13, 2013) and/or the inventor's oath or declaration. In such cases, a notice is mailed by OPAP requiring the appropriate fees, claims (for applications filed on or after December 13, 2013) and for applications filed before September 16, 2012, the oath or declaration (which must include the names of all the inventors), accompanied by a surcharge (37 CFR 1.16(f)).

For applications which have been accorded a filing date under 37 CFR 1.53(b), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required. In addition to the basic filing fee, the search fee, and the examination fee, 37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules. See 37 CFR 1.52(f).The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. Any “Sequence Listing” or CRF of a “Sequence Listing” in compliance with 37 CFR 1.821(c) or (e), any “Sequence Listing XML” in compliance with 37 CFR 1.831(a), and any “Computer Program Listing Appendix” in compliance with 37 CFR 1.96(c) submitted on a read-only optical disc under 37 CFR 1.52(e) or submitted in an ASCII plain text file or XML file (as applicable) via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(1) and (2). See also MPEP § 607. The application size fee required by 37 CFR 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 (37 CFR 1.53(f)(3)). See MPEP § 607 for additional information regarding fees. In addition to the basic filing fee, the search fee, the examination fee, and the application size fee required under 37 CFR 1.16, the prescribed filing fee (37 CFR 1.51(b)(4)) may include additional fees for filing more than 3 independent claims (37 CFR 1.16(h)), for filing a total of more than 20 claims (37 CFR 1.16(i)), or for filing a multiple dependent claim (37 CFR 1.16(j)). In those cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.

For applications which have been accorded a filing date under 37 CFR 1.53(b), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required. In addition to the basic filing fee, the search fee, and the examination fee, 37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules. See 37 CFR 1.52(f).The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. Any “Sequence Listing” or CRF of a “Sequence Listing” in compliance with 37 CFR 1.821(c) or (e), any “Sequence Listing XML” in compliance with 37 CFR 1.831(a), and any “Computer Program Listing Appendix” in compliance with 37 CFR 1.96(c) submitted on a read-only optical disc under 37 CFR 1.52(e) or submitted in an ASCII plain text file or XML file (as applicable) via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(1) and (2). See also MPEP § 607. The application size fee required by 37 CFR 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 (37 CFR 1.53(f)(3)). See MPEP § 607 for additional information regarding fees. In addition to the basic filing fee, the search fee, the examination fee, and the application size fee required under 37 CFR 1.16, the prescribed filing fee (37 CFR 1.51(b)(4)) may include additional fees for filing more than 3 independent claims (37 CFR 1.16(h)), for filing a total of more than 20 claims (37 CFR 1.16(i)), or for filing a multiple dependent claim (37 CFR 1.16(j)). In those cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.

For applications which have been accorded a filing date under 37 CFR 1.53(b), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required. In addition to the basic filing fee, the search fee, and the examination fee, 37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules. See 37 CFR 1.52(f).The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. Any “Sequence Listing” or CRF of a “Sequence Listing” in compliance with 37 CFR 1.821(c) or (e), any “Sequence Listing XML” in compliance with 37 CFR 1.831(a), and any “Computer Program Listing Appendix” in compliance with 37 CFR 1.96(c) submitted on a read-only optical disc under 37 CFR 1.52(e) or submitted in an ASCII plain text file or XML file (as applicable) via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(1) and (2). See also MPEP § 607. The application size fee required by 37 CFR 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 (37 CFR 1.53(f)(3)). See MPEP § 607 for additional information regarding fees. In addition to the basic filing fee, the search fee, the examination fee, and the application size fee required under 37 CFR 1.16, the prescribed filing fee (37 CFR 1.51(b)(4)) may include additional fees for filing more than 3 independent claims (37 CFR 1.16(h)), for filing a total of more than 20 claims (37 CFR 1.16(i)), or for filing a multiple dependent claim (37 CFR 1.16(j)). In those cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.

For applications which have been accorded a filing date under 37 CFR 1.53(b), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required. In addition to the basic filing fee, the search fee, and the examination fee, 37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules. See 37 CFR 1.52(f).The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. Any “Sequence Listing” or CRF of a “Sequence Listing” in compliance with 37 CFR 1.821(c) or (e), any “Sequence Listing XML” in compliance with 37 CFR 1.831(a), and any “Computer Program Listing Appendix” in compliance with 37 CFR 1.96(c) submitted on a read-only optical disc under 37 CFR 1.52(e) or submitted in an ASCII plain text file or XML file (as applicable) via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(1) and (2). See also MPEP § 607. The application size fee required by 37 CFR 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 (37 CFR 1.53(f)(3)). See MPEP § 607 for additional information regarding fees. In addition to the basic filing fee, the search fee, the examination fee, and the application size fee required under 37 CFR 1.16, the prescribed filing fee (37 CFR 1.51(b)(4)) may include additional fees for filing more than 3 independent claims (37 CFR 1.16(h)), for filing a total of more than 20 claims (37 CFR 1.16(i)), or for filing a multiple dependent claim (37 CFR 1.16(j)). In those cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.

For applications which have been accorded a filing date under 37 CFR 1.53(b), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required. In addition to the basic filing fee, the search fee, and the examination fee, 37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules. See 37 CFR 1.52(f).The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. Any “Sequence Listing” or CRF of a “Sequence Listing” in compliance with 37 CFR 1.821(c) or (e), any “Sequence Listing XML” in compliance with 37 CFR 1.831(a), and any “Computer Program Listing Appendix” in compliance with 37 CFR 1.96(c) submitted on a read-only optical disc under 37 CFR 1.52(e) or submitted in an ASCII plain text file or XML file (as applicable) via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(1) and (2). See also MPEP § 607. The application size fee required by 37 CFR 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 (37 CFR 1.53(f)(3)). See MPEP § 607 for additional information regarding fees. In addition to the basic filing fee, the search fee, the examination fee, and the application size fee required under 37 CFR 1.16, the prescribed filing fee (37 CFR 1.51(b)(4)) may include additional fees for filing more than 3 independent claims (37 CFR 1.16(h)), for filing a total of more than 20 claims (37 CFR 1.16(i)), or for filing a multiple dependent claim (37 CFR 1.16(j)). In those cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.

For applications which have been accorded a filing date under 37 CFR 1.53(b), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required. In addition to the basic filing fee, the search fee, and the examination fee, 37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules. See 37 CFR 1.52(f).The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. Any “Sequence Listing” or CRF of a “Sequence Listing” in compliance with 37 CFR 1.821(c) or (e), any “Sequence Listing XML” in compliance with 37 CFR 1.831(a), and any “Computer Program Listing Appendix” in compliance with 37 CFR 1.96(c) submitted on a read-only optical disc under 37 CFR 1.52(e) or submitted in an ASCII plain text file or XML file (as applicable) via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(1) and (2). See also MPEP § 607. The application size fee required by 37 CFR 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 (37 CFR 1.53(f)(3)). See MPEP § 607 for additional information regarding fees. In addition to the basic filing fee, the search fee, the examination fee, and the application size fee required under 37 CFR 1.16, the prescribed filing fee (37 CFR 1.51(b)(4)) may include additional fees for filing more than 3 independent claims (37 CFR 1.16(h)), for filing a total of more than 20 claims (37 CFR 1.16(i)), or for filing a multiple dependent claim (37 CFR 1.16(j)). In those cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.

(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.

(d) Application filing requirements – Continued prosecution (nonprovisional) application.
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(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.

(d) Application filing requirements – Continued prosecution (nonprovisional) application.
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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.

(d) Application filing requirements – Continued prosecution (nonprovisional) application.
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(9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.

(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.

(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.

Such incompleteness may consist of the omission of any one of the following parts of an application. The component parts of a provisional application necessary to obtain a filing date are:

A drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.81(a) (for applications filed prior to March 18, 2013).

(d) Application filing requirements – Continued prosecution (nonprovisional) application.
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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.

(e) Failure to meet filing date requirements.
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(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).

If the nonprovisional utility application papers filed under 37 CFR 1.53(b) do not include at least a specification or if the submitted papers are too informal to be given a filing date, the case is held in the Office of Patent Application Processing (OPAP) as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.

For example, if the documents purporting to be a specification are so obviously informal and incoherent that they clearly do not constitute a specification as required by 35 U.S.C. 112 and 37 CFR 1.71, the application is not acceptable for examination and it will not be accorded a filing date until corrections are made. The filing date of the application will be the date the corrections are made.

A nonprovisional application filed under 37 CFR 1.53(b) may be filed with a preliminary amendment which is limited to the cancellation of claims. Any preliminary amendment, regardless of when it is filed, must be in compliance with 37 CFR 1.121, e.g., it must include a complete listing of all of the claims. Therefore, the Office strongly recommends that applicants file their applications with a specification containing only the desired set of claims, rather than filing the application with a preliminary amendment canceling claims. If such a preliminary amendment canceling claims is filed, it will diminish the number of claims to be considered for calculation of the filing fee. Any other changes to the application should be the subject of a separate amendment which may be entered after the filing fee has been calculated and the filing date granted. If a preliminary amendment which cancels claims does not accompany the application at the time the application is filed, and there is a fee deficiency, the notification of insufficient fee will inform the inventor, attorney, or agent of the possibility of correcting the insufficient payment by either (1) paying the additional required fee amount, or (2) filing an amendment which cancels claims so that the remaining claims are covered by the fee submitted upon filing. However, no refund will be made once the fee for claims is properly paid, even though claims are later canceled, unless a petition for express abandonment under 37 CFR 1.138(d) is granted. See MPEP § 711.01.

A specification, with or without claims, as prescribed by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, and 37 CFR 1.71.

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices. In such applications, OPAP will send a Notice (e.g., Notice to File Corrected Application Papers) requiring correction of the informality. Failure to correct the informality within the specified time results in abandonment of the application.

(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.

(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.

(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.

(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, the search fee, or the 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 pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by § 1.16(f) to avoid abandonment.

(f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application.
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(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.

If the nonprovisional utility application papers filed under 37 CFR 1.53(b) do not include at least a specification or if the submitted papers are too informal to be given a filing date, the case is held in the Office of Patent Application Processing (OPAP) as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.

If the nonprovisional design application papers filed under 37 CFR 1.53(b) do not include at least a specification containing a description and at least one claim and a drawing, if necessary under 35 U.S.C. 113 (first sentence), or if the submitted application papers are too informal to be given a filing date, the case is held in the Office of Patent Application Processing (OPAP) as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.

If the provisional application papers do not include at least a specification containing a description and a drawing, if necessary under 35 U.S.C. 113 (first sentence) (for applications filed prior to March 18, 2013) or if the submitted application papers are too informal to be given a filing date, the case is held in OPAP as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.

Even though an application purports to include the component part(s) necessary to obtain a filing date, the application will still be held to be incomplete and a filing date will be refused if the component parts fail to satisfy the requirements set forth above. For example, if the documents purporting to be a specification are so obviously informal and incoherent that they would clearly not constitute a specification as required by 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph, and 37 CFR 1.71, the application would not be acceptable and would not be accorded a filing date until corrections are made. The filing date of the application would be the date the corrections were made. A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b). See 37 CFR 1.53(c)(1).

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices. In such applications, OPAP will send a Notice (e.g., Notice to File Corrected Application Papers) requiring correction of the informality. Failure to correct the informality within the specified time results in abandonment of the application.

Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004)), at least one claim (for applications filed on or after December 13, 2013) and/or the inventor's oath or declaration. In such cases, a notice is mailed by OPAP requiring the appropriate fees, claims (for applications filed on or after December 13, 2013) and for applications filed before September 16, 2012, the oath or declaration (which must include the names of all the inventors), accompanied by a surcharge (37 CFR 1.16(f)).

For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.53(f)(3). Applicant must file the inventor’s oath or declaration no later than the date on which the issue fee is paid. See 35 U.S.C. 115(f).

The Office has modified the missing parts practice for applications (other than reissue applications) filed on or after September 16, 2012. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, contains the applicable filing fees (basic filing fee, search fee, examination fee, any applicable excess claims fee, and any applicable application size fee), the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the required inventor information, but does not include the inventor’s oath or declaration, the Office will not issue a Notice to File Missing Parts requiring the applicant to file the inventor’s oath or declaration. Instead, the Office may send an informational notice notifying the applicant that the inventor’s oath or declaration has not been received or that there are deficiencies in an inventor’s oath or declaration that was filed. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, that does not contain the inventor’s oath or declaration also does not contain the applicable filing fees, or the surcharge required by 37 CFR 1.16(f), or a signed ADS providing the inventor information, the Office will issue a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing filing fees, the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the inventor information (or the inventor’s oath or declaration) to avoid abandonment. If an application is in condition for allowance and the required inventor’s oath or declaration (an oath or declaration under 37 CFR 1.63, or a substitute statement under 37 CFR 1.64, executed by or with respect to each actual inventor) has not yet been filed, the Office will issue a notice with the Notice of Allowability requiring the inventor’s oath or declaration to be filed no later than the date on which the issue fee is paid.

The Office has modified the missing parts practice for applications (other than reissue applications) filed on or after September 16, 2012. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, contains the applicable filing fees (basic filing fee, search fee, examination fee, any applicable excess claims fee, and any applicable application size fee), the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the required inventor information, but does not include the inventor’s oath or declaration, the Office will not issue a Notice to File Missing Parts requiring the applicant to file the inventor’s oath or declaration. Instead, the Office may send an informational notice notifying the applicant that the inventor’s oath or declaration has not been received or that there are deficiencies in an inventor’s oath or declaration that was filed. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, that does not contain the inventor’s oath or declaration also does not contain the applicable filing fees, or the surcharge required by 37 CFR 1.16(f), or a signed ADS providing the inventor information, the Office will issue a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing filing fees, the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the inventor information (or the inventor’s oath or declaration) to avoid abandonment. If an application is in condition for allowance and the required inventor’s oath or declaration (an oath or declaration under 37 CFR 1.63, or a substitute statement under 37 CFR 1.64, executed by or with respect to each actual inventor) has not yet been filed, the Office will issue a notice with the Notice of Allowability requiring the inventor’s oath or declaration to be filed no later than the date on which the issue fee is paid.

The Office has modified the missing parts practice for applications (other than reissue applications) filed on or after September 16, 2012. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, contains the applicable filing fees (basic filing fee, search fee, examination fee, any applicable excess claims fee, and any applicable application size fee), the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the required inventor information, but does not include the inventor’s oath or declaration, the Office will not issue a Notice to File Missing Parts requiring the applicant to file the inventor’s oath or declaration. Instead, the Office may send an informational notice notifying the applicant that the inventor’s oath or declaration has not been received or that there are deficiencies in an inventor’s oath or declaration that was filed. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, that does not contain the inventor’s oath or declaration also does not contain the applicable filing fees, or the surcharge required by 37 CFR 1.16(f), or a signed ADS providing the inventor information, the Office will issue a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing filing fees, the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the inventor information (or the inventor’s oath or declaration) to avoid abandonment. If an application is in condition for allowance and the required inventor’s oath or declaration (an oath or declaration under 37 CFR 1.63, or a substitute statement under 37 CFR 1.64, executed by or with respect to each actual inventor) has not yet been filed, the Office will issue a notice with the Notice of Allowability requiring the inventor’s oath or declaration to be filed no later than the date on which the issue fee is paid.

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

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

(g) Completion of application subsequent to filing—Provisional application.
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(4) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.

(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).

A Notice of Incomplete Application is prepared and mailed by OPAP when nonprovisional application papers filed under 37 CFR 1.53(b) are deemed incomplete under 35 U.S.C. 111(a).

A nonprovisional application filed under 37 CFR 1.53(b) may be filed with a preliminary amendment which is limited to the cancellation of claims. Any preliminary amendment, regardless of when it is filed, must be in compliance with 37 CFR 1.121, e.g., it must include a complete listing of all of the claims. Therefore, the Office strongly recommends that applicants file their applications with a specification containing only the desired set of claims, rather than filing the application with a preliminary amendment canceling claims. If such a preliminary amendment canceling claims is filed, it will diminish the number of claims to be considered for calculation of the filing fee. Any other changes to the application should be the subject of a separate amendment which may be entered after the filing fee has been calculated and the filing date granted. If a preliminary amendment which cancels claims does not accompany the application at the time the application is filed, and there is a fee deficiency, the notification of insufficient fee will inform the inventor, attorney, or agent of the possibility of correcting the insufficient payment by either (1) paying the additional required fee amount, or (2) filing an amendment which cancels claims so that the remaining claims are covered by the fee submitted upon filing. However, no refund will be made once the fee for claims is properly paid, even though claims are later canceled, unless a petition for express abandonment under 37 CFR 1.138(d) is granted. See MPEP § 711.01.

A filing date is normally granted before a review of the subject matter claimed in a nonprovisional application. If a nonprovisional application filed under 37 CFR 1.53(b) appears sufficient, the application is forwarded to the examiner for consideration during the regular course of examination.

A filing date is normally granted before a review of the subject matter claimed in a nonprovisional application. If a nonprovisional application filed under 37 CFR 1.53(b) appears sufficient, the application is forwarded to the examiner for consideration during the regular course of examination.

(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 provisional application under paragraph (c) of this section, is the date on which a specification, with or without claims, is received in 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.
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(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.

(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.
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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.

(d) Application filing requirements – Continued prosecution (nonprovisional) application.
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(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).

(d) Application filing requirements – Continued prosecution (nonprovisional) application.
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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.

(d) Application filing requirements – Continued prosecution (nonprovisional) application.
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(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.

(d) Application filing requirements – Continued prosecution (nonprovisional) application.
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(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.

For example, if the documents purporting to be a specification are so obviously informal and incoherent that they clearly do not constitute a specification as required by 35 U.S.C. 112 and 37 CFR 1.71, the application is not acceptable for examination and it will not be accorded a filing date until corrections are made. The filing date of the application will be the date the corrections are made.

Even though an application purports to include the component part(s) necessary to obtain a filing date, the application will still be held to be incomplete and a filing date will be refused if the component parts fail to satisfy the requirements set forth above. For example, if the documents purporting to be a specification are so obviously informal and incoherent that they would clearly not constitute a specification as required by 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph, and 37 CFR 1.71, the application would not be acceptable and would not be accorded a filing date until corrections are made. The filing date of the application would be the date the corrections were made. A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b). See 37 CFR 1.53(c)(1).

(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 provisional application under paragraph (c) of this section, is the date on which a specification, with or without claims, is received in 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.

(d) Application filing requirements – Continued prosecution (nonprovisional) application.
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No amendment in an application under this paragraph may delete this specific reference to any prior application.

(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 provisional application under paragraph (c) of this section, is the date on which a specification, with or without claims, is received in 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.
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(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.

(f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application.
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(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.

(e) Failure to meet filing date requirements.
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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.

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices. In such applications, OPAP will send a Notice (e.g., Notice to File Corrected Application Papers) requiring correction of the informality. Failure to correct the informality within the specified time results in abandonment of the application.

(e) Failure to meet filing date requirements.
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(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.

(e) Failure to meet filing date requirements.
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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.
(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.
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(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.

(f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application.
(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.
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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.

(f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application.
(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.
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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.

(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.

For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.53(f)(3). Applicant must file the inventor’s oath or declaration no later than the date on which the issue fee is paid. See 35 U.S.C. 115(f).

The Office has modified the missing parts practice for applications (other than reissue applications) filed on or after September 16, 2012. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, contains the applicable filing fees (basic filing fee, search fee, examination fee, any applicable excess claims fee, and any applicable application size fee), the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the required inventor information, but does not include the inventor’s oath or declaration, the Office will not issue a Notice to File Missing Parts requiring the applicant to file the inventor’s oath or declaration. Instead, the Office may send an informational notice notifying the applicant that the inventor’s oath or declaration has not been received or that there are deficiencies in an inventor’s oath or declaration that was filed. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, that does not contain the inventor’s oath or declaration also does not contain the applicable filing fees, or the surcharge required by 37 CFR 1.16(f), or a signed ADS providing the inventor information, the Office will issue a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing filing fees, the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the inventor information (or the inventor’s oath or declaration) to avoid abandonment. If an application is in condition for allowance and the required inventor’s oath or declaration (an oath or declaration under 37 CFR 1.63, or a substitute statement under 37 CFR 1.64, executed by or with respect to each actual inventor) has not yet been filed, the Office will issue a notice with the Notice of Allowability requiring the inventor’s oath or declaration to be filed no later than the date on which the issue fee is paid.

(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.

(d) Application filing requirements – Continued prosecution (nonprovisional) application.
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(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.

(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, the search fee, or the 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 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.
• (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.

(f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application.
(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:
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(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.

(f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application.
(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.
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This time period is not extendable under § 1.136 (see § 1.136(c)).

(f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application.
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(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 nonprovisional design application papers filed under 37 CFR 1.53(b) do not include at least a specification containing a description and at least one claim and a drawing, if necessary under 35 U.S.C. 113 (first sentence), or if the submitted application papers are too informal to be given a filing date, the case is held in the Office of Patent Application Processing (OPAP) as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.

The Office has modified the missing parts practice for applications (other than reissue applications) filed on or after September 16, 2012. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, contains the applicable filing fees (basic filing fee, search fee, examination fee, any applicable excess claims fee, and any applicable application size fee), the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the required inventor information, but does not include the inventor’s oath or declaration, the Office will not issue a Notice to File Missing Parts requiring the applicant to file the inventor’s oath or declaration. Instead, the Office may send an informational notice notifying the applicant that the inventor’s oath or declaration has not been received or that there are deficiencies in an inventor’s oath or declaration that was filed. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, that does not contain the inventor’s oath or declaration also does not contain the applicable filing fees, or the surcharge required by 37 CFR 1.16(f), or a signed ADS providing the inventor information, the Office will issue a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing filing fees, the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the inventor information (or the inventor’s oath or declaration) to avoid abandonment. If an application is in condition for allowance and the required inventor’s oath or declaration (an oath or declaration under 37 CFR 1.63, or a substitute statement under 37 CFR 1.64, executed by or with respect to each actual inventor) has not yet been filed, the Office will issue a notice with the Notice of Allowability requiring the inventor’s oath or declaration to be filed no later than the date on which the issue fee is paid.

For applications which have been accorded a filing date under 37 CFR 1.53(b), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required. In addition to the basic filing fee, the search fee, and the examination fee, 37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules. See 37 CFR 1.52(f).The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. Any “Sequence Listing” or CRF of a “Sequence Listing” in compliance with 37 CFR 1.821(c) or (e), any “Sequence Listing XML” in compliance with 37 CFR 1.831(a), and any “Computer Program Listing Appendix” in compliance with 37 CFR 1.96(c) submitted on a read-only optical disc under 37 CFR 1.52(e) or submitted in an ASCII plain text file or XML file (as applicable) via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(1) and (2). See also MPEP § 607. The application size fee required by 37 CFR 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 (37 CFR 1.53(f)(3)). See MPEP § 607 for additional information regarding fees. In addition to the basic filing fee, the search fee, the examination fee, and the application size fee required under 37 CFR 1.16, the prescribed filing fee (37 CFR 1.51(b)(4)) may include additional fees for filing more than 3 independent claims (37 CFR 1.16(h)), for filing a total of more than 20 claims (37 CFR 1.16(i)), or for filing a multiple dependent claim (37 CFR 1.16(j)). In those cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.

For applications which have been accorded a filing date under 37 CFR 1.53(b), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required. In addition to the basic filing fee, the search fee, and the examination fee, 37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules. See 37 CFR 1.52(f).The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. Any “Sequence Listing” or CRF of a “Sequence Listing” in compliance with 37 CFR 1.821(c) or (e), any “Sequence Listing XML” in compliance with 37 CFR 1.831(a), and any “Computer Program Listing Appendix” in compliance with 37 CFR 1.96(c) submitted on a read-only optical disc under 37 CFR 1.52(e) or submitted in an ASCII plain text file or XML file (as applicable) via the USPTO patent electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(1) and (2). See also MPEP § 607. The application size fee required by 37 CFR 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 (37 CFR 1.53(f)(3)). See MPEP § 607 for additional information regarding fees. In addition to the basic filing fee, the search fee, the examination fee, and the application size fee required under 37 CFR 1.16, the prescribed filing fee (37 CFR 1.51(b)(4)) may include additional fees for filing more than 3 independent claims (37 CFR 1.16(h)), for filing a total of more than 20 claims (37 CFR 1.16(i)), or for filing a multiple dependent claim (37 CFR 1.16(j)). In those cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.

A nonprovisional application filed under 37 CFR 1.53(b) may be filed with a preliminary amendment which is limited to the cancellation of claims. Any preliminary amendment, regardless of when it is filed, must be in compliance with 37 CFR 1.121, e.g., it must include a complete listing of all of the claims. Therefore, the Office strongly recommends that applicants file their applications with a specification containing only the desired set of claims, rather than filing the application with a preliminary amendment canceling claims. If such a preliminary amendment canceling claims is filed, it will diminish the number of claims to be considered for calculation of the filing fee. Any other changes to the application should be the subject of a separate amendment which may be entered after the filing fee has been calculated and the filing date granted. If a preliminary amendment which cancels claims does not accompany the application at the time the application is filed, and there is a fee deficiency, the notification of insufficient fee will inform the inventor, attorney, or agent of the possibility of correcting the insufficient payment by either (1) paying the additional required fee amount, or (2) filing an amendment which cancels claims so that the remaining claims are covered by the fee submitted upon filing. However, no refund will be made once the fee for claims is properly paid, even though claims are later canceled, unless a petition for express abandonment under 37 CFR 1.138(d) is granted. See MPEP § 711.01.

A nonprovisional application filed under 37 CFR 1.53(b) may be filed with a preliminary amendment which is limited to the cancellation of claims. Any preliminary amendment, regardless of when it is filed, must be in compliance with 37 CFR 1.121, e.g., it must include a complete listing of all of the claims. Therefore, the Office strongly recommends that applicants file their applications with a specification containing only the desired set of claims, rather than filing the application with a preliminary amendment canceling claims. If such a preliminary amendment canceling claims is filed, it will diminish the number of claims to be considered for calculation of the filing fee. Any other changes to the application should be the subject of a separate amendment which may be entered after the filing fee has been calculated and the filing date granted. If a preliminary amendment which cancels claims does not accompany the application at the time the application is filed, and there is a fee deficiency, the notification of insufficient fee will inform the inventor, attorney, or agent of the possibility of correcting the insufficient payment by either (1) paying the additional required fee amount, or (2) filing an amendment which cancels claims so that the remaining claims are covered by the fee submitted upon filing. However, no refund will be made once the fee for claims is properly paid, even though claims are later canceled, unless a petition for express abandonment under 37 CFR 1.138(d) is granted. See MPEP § 711.01.

A nonprovisional application filed under 37 CFR 1.53(b) may be filed with a preliminary amendment which is limited to the cancellation of claims. Any preliminary amendment, regardless of when it is filed, must be in compliance with 37 CFR 1.121, e.g., it must include a complete listing of all of the claims. Therefore, the Office strongly recommends that applicants file their applications with a specification containing only the desired set of claims, rather than filing the application with a preliminary amendment canceling claims. If such a preliminary amendment canceling claims is filed, it will diminish the number of claims to be considered for calculation of the filing fee. Any other changes to the application should be the subject of a separate amendment which may be entered after the filing fee has been calculated and the filing date granted. If a preliminary amendment which cancels claims does not accompany the application at the time the application is filed, and there is a fee deficiency, the notification of insufficient fee will inform the inventor, attorney, or agent of the possibility of correcting the insufficient payment by either (1) paying the additional required fee amount, or (2) filing an amendment which cancels claims so that the remaining claims are covered by the fee submitted upon filing. However, no refund will be made once the fee for claims is properly paid, even though claims are later canceled, unless a petition for express abandonment under 37 CFR 1.138(d) is granted. See MPEP § 711.01.

Even though an application purports to include the component part(s) necessary to obtain a filing date, the application will still be held to be incomplete and a filing date will be refused if the component parts fail to satisfy the requirements set forth above. For example, if the documents purporting to be a specification are so obviously informal and incoherent that they would clearly not constitute a specification as required by 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph, and 37 CFR 1.71, the application would not be acceptable and would not be accorded a filing date until corrections are made. The filing date of the application would be the date the corrections were made. A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b). See 37 CFR 1.53(c)(1).