37 CFR § 1.57 — Incorporation by reference. (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.57 Incorporation by reference.
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 1.57, including 305 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
The Incorporation by Reference rule allows applicants to include information from another document in their patent application without repeating it, provided the reference is clearly and unambiguously made.
What this section covers
- Incorporation by reference permits applicants to include information from an external source within a patent application without duplicating the content. This method saves space and ensures consistency in the application's disclosure.
- This section provides detailed guidance on how to properly incorporate information from another document, ensuring that the reference is clear and unambiguous.
Key obligations
- Ensure that the incorporated information is clearly and unambiguously referenced in the application. This includes specifying the document and its sections.
- Provide a copy of the incorporated document with the application to ensure that examiners can access the referenced information.
- Comply with 37 CFR 1.57, which outlines the specific requirements for incorporating information by reference.
Practice notes
- Clearly identify the incorporated document and its sections to avoid confusion during examination. This helps ensure that examiners can easily locate the referenced information.
- Failure to provide the incorporated document with the application can lead to rejection. Always include a copy of the referenced material.
Official MPEP § 1.57 — Incorporation by reference.
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.57 Incorporation by reference.
[Editor Note: Para. (a) below is only applicable to patent applications filed under 35 U.S.C. 111(a) on or after December 18, 2013 *]
- (a) Subject to the conditions and requirements of
this paragraph, a reference made in the English language in an
application data sheet in accordance with §
1.76
upon the filing of an application under
35 U.S.C.
111(a)
to a previously filed application,
indicating that the specification and any drawings of the
application under
35 U.S.C.
111(a)
are replaced by the reference to the
previously filed application, and specifying the previously filed
application by application number, filing date, and the
intellectual property authority or country in which the previously
filed application was filed, shall constitute the specification and
any drawings of the application under
35 U.S.C.
111(a)
for purposes of a filing date under §
1.53(b)
.
- (1) If the applicant has provided a correspondence address (§ 1.33(a) ), the applicant will be notified and given a period of time within which to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i) if it is in a language other than English, and pay the surcharge required by § 1.16(f) , to avoid abandonment. Such a notice may be combined with a notice under § 1.53(f) .
- (2) If the applicant has not provided a correspondence address (§ 1.33(a) ), the applicant has three months from the filing date of the application to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i) if it is in a language other than English, and pay the surcharge required by § 1.16(f) , to avoid abandonment.
- (3) An application abandoned under paragraph
(a)(1) or (a)(2) of this section shall be treated as having
never been filed, unless:
- (i) The application is revived under § 1.137; and
- (ii) A copy of the specification and any drawings of the previously filed application are filed in the Office.
- (4) A certified copy of the previously filed application must be filed in the Office, unless the previously filed application is an application filed under 35 U.S.C. 111 or 363 , or the previously filed application is a foreign priority application and the conditions set forth in § 1.55(i) are satisfied with respect to such foreign priority application. The certified copy of the previously filed application, if required by this paragraph, must be filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, or be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g) .
- (b) Subject to the conditions and
requirements of this paragraph, if all or a portion of the
specification or drawing(s) is inadvertently omitted from an
application, but the application contains a claim under §
1.55
for
priority of a prior-filed foreign application or a claim under §
1.78
for the
benefit of a prior-filed provisional, nonprovisional, international
application, or international design application, that was present
on the filing date of the application, and the inadvertently
omitted portion of the specification or drawing(s) is completely
contained in the prior-filed application, the claim under §
1.55
or
1.78
shall also
be considered an incorporation by reference of the prior-filed
application as to the inadvertently omitted portion of the
specification or drawing(s).
- (1) The application must be amended to
include the inadvertently omitted portion of the
specification or drawing(s) within any time period set by the
Office, but in no case later than the close of prosecution as
defined by §
1.114(b)
,
or abandonment of the application, whichever occurs earlier.
The applicant is also required to:
- (i) Supply a copy of the prior-filed application, except where the prior-filed application is an application filed under 35 U.S.C. 111 ;
- (ii) Supply an English language translation of any prior-filed application that is in a language other than English; and
- (iii) Identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.
- (2) Any amendment to an international application pursuant to paragraph (b)(1) of this section shall be effective only as to the United States, and shall have no effect on the international filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an international application designating the United States will be acted upon by the Office prior to the entry and commencement of the national stage (§ 1.491 ) or the filing of an application under 35 U.S.C. 111(a) which claims benefit of the international application. Any omitted portion of the international application which applicant desires to be effective as to all designated States, subject to PCT Rule 20.8(b) , must be submitted in accordance with PCT Rule 20 .
- (3) If an application is not otherwise entitled to a filing date under § 1.53(b) , the amendment must be by way of a petition pursuant to § 1.53(e) accompanied by the fee set forth in § 1.17(f) .
- (4) Any amendment to an international design application pursuant to paragraph (b)(1) of this section shall be effective only as to the United States and shall have no effect on the filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an international design application will be acted upon by the Office prior to the international design application becoming a nonprovisional application.
- (1) The application must be amended to
include the inadvertently omitted portion of the
specification or drawing(s) within any time period set by the
Office, but in no case later than the close of prosecution as
defined by §
1.114(b)
,
or abandonment of the application, whichever occurs earlier.
The applicant is also required to:
- (c) Except as provided in paragraph (a) or (b) of this
section, an incorporation by reference must be set forth in the
specification and must:
- (1) Express a clear intent to incorporate by reference by using the root words “incorporat(e)” and “reference” ( e.g., “incorporate by reference”); and
- (2) Clearly identify the referenced patent, application, or publication.
- (d) “Essential material” may be incorporated by
reference, but only by way of an incorporation by reference to a
U.S. patent or U.S. patent application publication, which patent or
patent application publication does not itself incorporate such
essential material by reference. “Essential material” is material
that is necessary to:
- (1) Provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor of carrying out the invention as required by 35 U.S.C. 112(a) ;
- (2) Describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b) ; or
- (3) Describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by 35 U.S.C. 112(f) .
- (e) Other material (“Nonessential material”) may be incorporated by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications. An incorporation by reference by hyperlink or other form of browser executable code is not permitted.
- (f) The examiner may require the applicant to supply a copy of the material incorporated by reference. If the Office requires the applicant to supply a copy of material incorporated by reference, the material must be accompanied by a statement that the copy supplied consists of the same material incorporated by reference in the referencing application.
- (g) Any insertion of material incorporated by reference into the specification or drawings of an application must be by way of an amendment to the specification or drawings. Such an amendment must be accompanied by a statement that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter.
- (h) An incorporation of material by reference that
does not comply with paragraphs (c), (d) or (e) of this section is
not effective to incorporate such material unless corrected within
any time period set by the Office, but in no case later than the
close of prosecution as defined by §
1.114(b)
, or abandonment of the application,
whichever occurs earlier. In addition:
- (1) A correction to comply with paragraph (c)(1) of this section is permitted only if the application as filed clearly conveys an intent to incorporate the material by reference. A mere reference to material does not convey an intent to incorporate the material by reference.
- (2) A correction to comply with paragraph (c)(2) of this section is only permitted for material that was sufficiently described to uniquely identify the document.
- (i) An application transmittal letter limited to the transmittal of a copy of the specification and drawings from a previously filed application submitted under paragraph (a) or (b) of this section may be signed by a juristic applicant or patent owner.
[Added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a)(3) added, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (a)(2) revised, 72 FR 51559, Sept. 10, 2007, effective Sept. 10, 2007; paras. (c)(1)-(3) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (a) revised, para. (b) introductory text revised and para. (b)(4) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[ * The changes to para. (a) effective Dec. 18, 2013 and May 13, 2015 are applicable only to patent applications filed on or after Dec. 18, 2013. See § 1.57 (pre‑PLT) for para. (a) applicable to applications filed before Dec. 18, 2013.]
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