Patent Law FAQ

Incorporating by reference a prior application in a continuation or divisional application can provide important benefits:

1. It allows the applicant to amend the continuing application to include subject matter from the prior application without the need for a petition, provided the continuing application is entitled to a filing date.
2. For applications filed on or after September 21, 2004, it can help recover inadvertently omitted material.

The MPEP states: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.

It’s important to note that an incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

For more information on 37 cfr 1.57, visit: 37 cfr 1.57.

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

For more information on incorporation by reference, visit: incorporation by reference.

Incorporation by reference can be an important tool in continuation applications, allowing applicants to include material from prior applications. The MPEP provides detailed guidance on this topic:

For applications filed on or after September 21, 2004:

An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.

Additionally, for these applications:

For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).

For applications filed before September 21, 2004:

The incorporation by reference statement could appear in the application transmittal letter or in the specification.

It’s important to note that incorporation by reference cannot be used to add new matter to an application after its filing date. The MPEP states:

An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

Proper use of incorporation by reference can help applicants maintain continuity between related applications and potentially recover from certain filing errors.

For more information on 37 cfr 1.57, visit: 37 cfr 1.57.

For more information on continuation application, visit: continuation application.

For more information on incorporation by reference, visit: incorporation by reference.

The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is inadvertently omitted from an application, such as through a clerical error. It allows inadvertently omitted material to be added to the application by way of a later-filed amendment if the inadvertently omitted portion is completely contained in a prior-filed application for which priority or benefit is claimed, even though there is no explicit incorporation by reference of the prior-filed application.

The following conditions and requirements need to be met to add omitted material to an application under 37 CFR 1.57(b):n

n
1. The application must have been filed on or after September 21, 2004

n

2. All or a portion of the specification or drawing(s) must have been inadvertently omitted

n

3. A priority claim under 37 CFR 1.55 or benefit claim under 37 CFR 1.78 must have been present on the filing date

n

4. The omitted portion must be completely contained in the prior-filed application

n

5. An amendment to include the omitted portion must be filed within a time period set by the Office

n

6. If not otherwise entitled to a filing date, a petition under 37 CFR 1.53(e) with the fee must also be filed

n

7. A copy of the prior-filed application must be supplied, except where the prior application was filed under 35 U.S.C. 111

n

8. An English translation of any non-English prior-filed application must be supplied

n

9. The location of the omitted portion in the prior-filed application must be identified

For international applications, 37 CFR 1.57(b)(1) specifies:n

n
• Any amendment will only be effective as to the United States and shall have no effect on the international filing date

n

• It cannot be relied upon to accord an international filing date or alter the filing date under PCT Article 11

n

• No request to add omitted material will be acted on prior to national stage entry under 37 CFR 1.491 or filing of a US application claiming benefit of the international application

n

Incorporating by reference a prior application in a continuation or divisional application can provide important benefits:

1. It allows the applicant to amend the continuing application to include subject matter from the prior application without the need for a petition, provided the continuing application is entitled to a filing date.
2. For applications filed on or after September 21, 2004, it can help recover inadvertently omitted material.

The MPEP states: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.

It’s important to note that an incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

For more information on 37 cfr 1.57, visit: 37 cfr 1.57.

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

For more information on incorporation by reference, visit: incorporation by reference.

Incorporation by reference can be an important tool in continuation applications, allowing applicants to include material from prior applications. The MPEP provides detailed guidance on this topic:

For applications filed on or after September 21, 2004:

An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.

Additionally, for these applications:

For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).

For applications filed before September 21, 2004:

The incorporation by reference statement could appear in the application transmittal letter or in the specification.

It’s important to note that incorporation by reference cannot be used to add new matter to an application after its filing date. The MPEP states:

An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

Proper use of incorporation by reference can help applicants maintain continuity between related applications and potentially recover from certain filing errors.

For more information on 37 cfr 1.57, visit: 37 cfr 1.57.

For more information on continuation application, visit: continuation application.

For more information on incorporation by reference, visit: incorporation by reference.

The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is inadvertently omitted from an application, such as through a clerical error. It allows inadvertently omitted material to be added to the application by way of a later-filed amendment if the inadvertently omitted portion is completely contained in a prior-filed application for which priority or benefit is claimed, even though there is no explicit incorporation by reference of the prior-filed application.

The following conditions and requirements need to be met to add omitted material to an application under 37 CFR 1.57(b):n

n
1. The application must have been filed on or after September 21, 2004

n

2. All or a portion of the specification or drawing(s) must have been inadvertently omitted

n

3. A priority claim under 37 CFR 1.55 or benefit claim under 37 CFR 1.78 must have been present on the filing date

n

4. The omitted portion must be completely contained in the prior-filed application

n

5. An amendment to include the omitted portion must be filed within a time period set by the Office

n

6. If not otherwise entitled to a filing date, a petition under 37 CFR 1.53(e) with the fee must also be filed

n

7. A copy of the prior-filed application must be supplied, except where the prior application was filed under 35 U.S.C. 111

n

8. An English translation of any non-English prior-filed application must be supplied

n

9. The location of the omitted portion in the prior-filed application must be identified

For international applications, 37 CFR 1.57(b)(1) specifies:n

n
• Any amendment will only be effective as to the United States and shall have no effect on the international filing date

n

• It cannot be relied upon to accord an international filing date or alter the filing date under PCT Article 11

n

• No request to add omitted material will be acted on prior to national stage entry under 37 CFR 1.491 or filing of a US application claiming benefit of the international application

n

The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is inadvertently omitted from an application, such as through a clerical error. It allows inadvertently omitted material to be added to the application by way of a later-filed amendment if the inadvertently omitted portion is completely contained in a prior-filed application for which priority or benefit is claimed, even though there is no explicit incorporation by reference of the prior-filed application.

Incorporating by reference a prior application in a continuation or divisional application can provide important benefits:

1. It allows the applicant to amend the continuing application to include subject matter from the prior application without the need for a petition, provided the continuing application is entitled to a filing date.
2. For applications filed on or after September 21, 2004, it can help recover inadvertently omitted material.

The MPEP states: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.

It’s important to note that an incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

For more information on 37 cfr 1.57, visit: 37 cfr 1.57.

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

For more information on incorporation by reference, visit: incorporation by reference.

The following conditions and requirements need to be met to add omitted material to an application under 37 CFR 1.57(b):n

n
1. The application must have been filed on or after September 21, 2004

n

2. All or a portion of the specification or drawing(s) must have been inadvertently omitted

n

3. A priority claim under 37 CFR 1.55 or benefit claim under 37 CFR 1.78 must have been present on the filing date

n

4. The omitted portion must be completely contained in the prior-filed application

n

5. An amendment to include the omitted portion must be filed within a time period set by the Office

n

6. If not otherwise entitled to a filing date, a petition under 37 CFR 1.53(e) with the fee must also be filed

n

7. A copy of the prior-filed application must be supplied, except where the prior application was filed under 35 U.S.C. 111

n

8. An English translation of any non-English prior-filed application must be supplied

n

9. The location of the omitted portion in the prior-filed application must be identified

Incorporation by reference can be an important tool in continuation applications, allowing applicants to include material from prior applications. The MPEP provides detailed guidance on this topic:

For applications filed on or after September 21, 2004:

An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.

Additionally, for these applications:

For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).

For applications filed before September 21, 2004:

The incorporation by reference statement could appear in the application transmittal letter or in the specification.

It’s important to note that incorporation by reference cannot be used to add new matter to an application after its filing date. The MPEP states:

An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

Proper use of incorporation by reference can help applicants maintain continuity between related applications and potentially recover from certain filing errors.

For more information on 37 cfr 1.57, visit: 37 cfr 1.57.

For more information on continuation application, visit: continuation application.

For more information on incorporation by reference, visit: incorporation by reference.

For international applications, 37 CFR 1.57(b)(1) specifies:n

n
• Any amendment will only be effective as to the United States and shall have no effect on the international filing date

n

• It cannot be relied upon to accord an international filing date or alter the filing date under PCT Article 11

n

• No request to add omitted material will be acted on prior to national stage entry under 37 CFR 1.491 or filing of a US application claiming benefit of the international application

n

The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is inadvertently omitted from an application, such as through a clerical error. It allows inadvertently omitted material to be added to the application by way of a later-filed amendment if the inadvertently omitted portion is completely contained in a prior-filed application for which priority or benefit is claimed, even though there is no explicit incorporation by reference of the prior-filed application.

Incorporating by reference a prior application in a continuation or divisional application can provide important benefits:

1. It allows the applicant to amend the continuing application to include subject matter from the prior application without the need for a petition, provided the continuing application is entitled to a filing date.
2. For applications filed on or after September 21, 2004, it can help recover inadvertently omitted material.

The MPEP states: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.

It’s important to note that an incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

For more information on 37 cfr 1.57, visit: 37 cfr 1.57.

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

For more information on incorporation by reference, visit: incorporation by reference.

The following conditions and requirements need to be met to add omitted material to an application under 37 CFR 1.57(b):n

n
1. The application must have been filed on or after September 21, 2004

n

2. All or a portion of the specification or drawing(s) must have been inadvertently omitted

n

3. A priority claim under 37 CFR 1.55 or benefit claim under 37 CFR 1.78 must have been present on the filing date

n

4. The omitted portion must be completely contained in the prior-filed application

n

5. An amendment to include the omitted portion must be filed within a time period set by the Office

n

6. If not otherwise entitled to a filing date, a petition under 37 CFR 1.53(e) with the fee must also be filed

n

7. A copy of the prior-filed application must be supplied, except where the prior application was filed under 35 U.S.C. 111

n

8. An English translation of any non-English prior-filed application must be supplied

n

9. The location of the omitted portion in the prior-filed application must be identified

Incorporation by reference can be an important tool in continuation applications, allowing applicants to include material from prior applications. The MPEP provides detailed guidance on this topic:

For applications filed on or after September 21, 2004:

An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.

Additionally, for these applications:

For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).

For applications filed before September 21, 2004:

The incorporation by reference statement could appear in the application transmittal letter or in the specification.

It’s important to note that incorporation by reference cannot be used to add new matter to an application after its filing date. The MPEP states:

An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

Proper use of incorporation by reference can help applicants maintain continuity between related applications and potentially recover from certain filing errors.

For more information on 37 cfr 1.57, visit: 37 cfr 1.57.

For more information on continuation application, visit: continuation application.

For more information on incorporation by reference, visit: incorporation by reference.

For international applications, 37 CFR 1.57(b)(1) specifies:n

n
• Any amendment will only be effective as to the United States and shall have no effect on the international filing date

n

• It cannot be relied upon to accord an international filing date or alter the filing date under PCT Article 11

n

• No request to add omitted material will be acted on prior to national stage entry under 37 CFR 1.491 or filing of a US application claiming benefit of the international application

n