Patent Law FAQ

The date September 21, 2004, is significant in relation to 37 CFR 1.57(b) because it marks the effective date of the provisions now contained in this regulation. The MPEP states that one reason an amendment might not comply with 37 CFR 1.57(b) is if the present application was filed before September 21, 2004, the effective date of the provisions now in 37 CFR 1.57(b).

This means that applications filed before this date cannot use the incorporation by reference procedure outlined in 37 CFR 1.57(b) to add inadvertently omitted material. For such applications, different rules and procedures would apply for addressing omitted material.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

For more information on effective date, visit: effective date.

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

To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:

1. The inadvertently omitted portion must be completely contained in the prior-filed application.
2. A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
3. If the prior-filed application is in a non-English language, an English language translation must be submitted.
4. The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.

The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

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

For more information on patent application requirements, visit: patent application requirements.

For more information on prior-filed application, visit: prior-filed application.

The MPEP outlines several reasons why an amendment might not comply with 37 CFR 1.57(b). These include:

• The application was filed before September 21, 2004 (the effective date of the provisions)
• The claim for priority/benefit of the prior-filed application was not present on the filing date
• The omitted portion is not completely contained in the prior-filed application
• A copy of the prior-filed application was not submitted (except for applications filed under 35 U.S.C. 111)
• An English language translation of a non-English prior-filed application was not submitted
• The applicant did not identify where the omitted portion can be found in the prior-filed application

If any of these conditions are not met, the examiner will state that the amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(b) filed [date] is not in compliance with 37 CFR 1.57(b) because [specific reason].

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

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

When an examiner encounters a non-compliant amendment under 37 CFR 1.57(b), they follow a specific procedure outlined in the MPEP:

1. They use a form paragraph stating the non-compliance and the specific reason.
2. If the amendment introduces new matter, they follow up with additional form paragraphs (7.28 for specification/drawings, 7.31.01 for claims).
3. For after-final amendments, they issue an advisory action indicating that the amendment raises new issues due to non-compliance.

The MPEP notes, This form paragraph must be followed by form paragraph 7.28, where the amendment is made to the specification and/or drawings and introduces new matter into the disclosure, and/or form paragraph 7.31.01, where the amendment adds new matter to the claims or affects the claims.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

37 CFR 1.57(b) is closely tied to priority claims in patent applications. For an amendment to comply with this regulation, the claim for priority or benefit of the prior-filed application must have been present on the filing date of the current application.

The MPEP specifically states that an amendment may not comply with 37 CFR 1.57(b) if the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application. This requirement ensures that the incorporation by reference is based on a properly established relationship between the current application and the prior-filed application.

If the priority claim was not present at filing, the applicant cannot use 37 CFR 1.57(b) to incorporate material from the prior-filed application, even if that material was inadvertently omitted.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

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

For more information on patent applications, visit: patent applications.

Incorporation by reference under 37 CFR 1.57(b) is a provision that allows applicants to add inadvertently omitted material to a patent application if certain conditions are met. Specifically:

• The application must contain a priority or benefit claim to a prior-filed application
• The omitted material must be completely contained in that prior-filed application
• The omission must have been inadvertent

This provision acts as a safeguard for applicants when material is accidentally left out of an application due to clerical error. As stated in the MPEP, “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 (are) inadvertently omitted from an application, such as through a clerical error.”

If you intentionally omit material from your application that was present in a prior-filed application, the omitted material will not automatically be incorporated by reference under 37 CFR 1.57(b). The MPEP clarifies:

“Applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.”

In other words, the incorporation by reference under 37 CFR 1.57(b) only applies to inadvertently omitted material. If you choose not to include certain material from the prior application, it will remain omitted unless you specifically amend your application to include it.

There are several key conditions that must be met to use incorporation by reference under 37 CFR 1.57(b):

1. The application must have been filed on or after September 21, 2004
2. Material must have been inadvertently omitted from the application
3. A priority or benefit claim to a prior-filed application must have been present on the filing date
4. The omitted material must be completely contained in the prior-filed application
5. An amendment to add the omitted material must be filed within the time period set by the USPTO
6. Other requirements like supplying copies of prior applications may apply

As stated in the MPEP: “The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(b):” followed by a list of specific conditions labeled (A) through (I).

To amend your application to include inadvertently omitted material under 37 CFR 1.57(b), you must:

1. File an amendment to include the omitted material within the time period set by the USPTO
2. Ensure the amendment is filed before the close of prosecution or abandonment of the application
3. Supply a copy of the prior-filed application (unless it’s a US application filed under 35 U.S.C. 111)
4. Provide an English translation if the prior-filed application is in a foreign language
5. Identify where the omitted material can be found in the prior-filed application

The MPEP states: “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 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.”

Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:

• It is only effective for the United States
• It does not affect the international filing date
• It cannot be used to accord an international filing date
• Requests to add omitted material will not be acted upon before national stage entry

The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”

No, incorporation by reference under 37 CFR 1.57(b) cannot be used to add material to a granted patent. This provision is only applicable during the application process, before a patent is granted. The MPEP clearly states:

“If, however, an application has been patented, a certificate of correction or a reissue application could not be used to add inadvertently omitted material to that patent via 37 CFR 1.57(b).”

Once a patent has been granted, other mechanisms such as reissue or certificate of correction would need to be considered for making changes or additions to the patent, subject to their own specific requirements and limitations.

The date September 21, 2004, is significant in relation to 37 CFR 1.57(b) because it marks the effective date of the provisions now contained in this regulation. The MPEP states that one reason an amendment might not comply with 37 CFR 1.57(b) is if the present application was filed before September 21, 2004, the effective date of the provisions now in 37 CFR 1.57(b).

This means that applications filed before this date cannot use the incorporation by reference procedure outlined in 37 CFR 1.57(b) to add inadvertently omitted material. For such applications, different rules and procedures would apply for addressing omitted material.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

For more information on effective date, visit: effective date.

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

Incorporation by reference under 37 CFR 1.57(b) is a provision that allows applicants to add inadvertently omitted material to a patent application if certain conditions are met. Specifically:

• The application must contain a priority or benefit claim to a prior-filed application
• The omitted material must be completely contained in that prior-filed application
• The omission must have been inadvertent

This provision acts as a safeguard for applicants when material is accidentally left out of an application due to clerical error. As stated in the MPEP, “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 (are) inadvertently omitted from an application, such as through a clerical error.”

If you intentionally omit material from your application that was present in a prior-filed application, the omitted material will not automatically be incorporated by reference under 37 CFR 1.57(b). The MPEP clarifies:

“Applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.”

In other words, the incorporation by reference under 37 CFR 1.57(b) only applies to inadvertently omitted material. If you choose not to include certain material from the prior application, it will remain omitted unless you specifically amend your application to include it.

To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:

1. The inadvertently omitted portion must be completely contained in the prior-filed application.
2. A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
3. If the prior-filed application is in a non-English language, an English language translation must be submitted.
4. The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.

The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

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

For more information on patent application requirements, visit: patent application requirements.

For more information on prior-filed application, visit: prior-filed application.

There are several key conditions that must be met to use incorporation by reference under 37 CFR 1.57(b):

1. The application must have been filed on or after September 21, 2004
2. Material must have been inadvertently omitted from the application
3. A priority or benefit claim to a prior-filed application must have been present on the filing date
4. The omitted material must be completely contained in the prior-filed application
5. An amendment to add the omitted material must be filed within the time period set by the USPTO
6. Other requirements like supplying copies of prior applications may apply

As stated in the MPEP: “The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(b):” followed by a list of specific conditions labeled (A) through (I).

The MPEP outlines several reasons why an amendment might not comply with 37 CFR 1.57(b). These include:

• The application was filed before September 21, 2004 (the effective date of the provisions)
• The claim for priority/benefit of the prior-filed application was not present on the filing date
• The omitted portion is not completely contained in the prior-filed application
• A copy of the prior-filed application was not submitted (except for applications filed under 35 U.S.C. 111)
• An English language translation of a non-English prior-filed application was not submitted
• The applicant did not identify where the omitted portion can be found in the prior-filed application

If any of these conditions are not met, the examiner will state that the amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(b) filed [date] is not in compliance with 37 CFR 1.57(b) because [specific reason].

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

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

When an examiner encounters a non-compliant amendment under 37 CFR 1.57(b), they follow a specific procedure outlined in the MPEP:

1. They use a form paragraph stating the non-compliance and the specific reason.
2. If the amendment introduces new matter, they follow up with additional form paragraphs (7.28 for specification/drawings, 7.31.01 for claims).
3. For after-final amendments, they issue an advisory action indicating that the amendment raises new issues due to non-compliance.

The MPEP notes, This form paragraph must be followed by form paragraph 7.28, where the amendment is made to the specification and/or drawings and introduces new matter into the disclosure, and/or form paragraph 7.31.01, where the amendment adds new matter to the claims or affects the claims.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

37 CFR 1.57(b) is closely tied to priority claims in patent applications. For an amendment to comply with this regulation, the claim for priority or benefit of the prior-filed application must have been present on the filing date of the current application.

The MPEP specifically states that an amendment may not comply with 37 CFR 1.57(b) if the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application. This requirement ensures that the incorporation by reference is based on a properly established relationship between the current application and the prior-filed application.

If the priority claim was not present at filing, the applicant cannot use 37 CFR 1.57(b) to incorporate material from the prior-filed application, even if that material was inadvertently omitted.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

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

For more information on patent applications, visit: patent applications.

To amend your application to include inadvertently omitted material under 37 CFR 1.57(b), you must:

1. File an amendment to include the omitted material within the time period set by the USPTO
2. Ensure the amendment is filed before the close of prosecution or abandonment of the application
3. Supply a copy of the prior-filed application (unless it’s a US application filed under 35 U.S.C. 111)
4. Provide an English translation if the prior-filed application is in a foreign language
5. Identify where the omitted material can be found in the prior-filed application

The MPEP states: “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 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.”

Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:

• It is only effective for the United States
• It does not affect the international filing date
• It cannot be used to accord an international filing date
• Requests to add omitted material will not be acted upon before national stage entry

The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”

No, incorporation by reference under 37 CFR 1.57(b) cannot be used to add material to a granted patent. This provision is only applicable during the application process, before a patent is granted. The MPEP clearly states:

“If, however, an application has been patented, a certificate of correction or a reissue application could not be used to add inadvertently omitted material to that patent via 37 CFR 1.57(b).”

Once a patent has been granted, other mechanisms such as reissue or certificate of correction would need to be considered for making changes or additions to the patent, subject to their own specific requirements and limitations.

The date September 21, 2004, is significant in relation to 37 CFR 1.57(b) because it marks the effective date of the provisions now contained in this regulation. The MPEP states that one reason an amendment might not comply with 37 CFR 1.57(b) is if the present application was filed before September 21, 2004, the effective date of the provisions now in 37 CFR 1.57(b).

This means that applications filed before this date cannot use the incorporation by reference procedure outlined in 37 CFR 1.57(b) to add inadvertently omitted material. For such applications, different rules and procedures would apply for addressing omitted material.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

For more information on effective date, visit: effective date.

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

Incorporation by reference under 37 CFR 1.57(b) is a provision that allows applicants to add inadvertently omitted material to a patent application if certain conditions are met. Specifically:

• The application must contain a priority or benefit claim to a prior-filed application
• The omitted material must be completely contained in that prior-filed application
• The omission must have been inadvertent

This provision acts as a safeguard for applicants when material is accidentally left out of an application due to clerical error. As stated in the MPEP, “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 (are) inadvertently omitted from an application, such as through a clerical error.”

If you intentionally omit material from your application that was present in a prior-filed application, the omitted material will not automatically be incorporated by reference under 37 CFR 1.57(b). The MPEP clarifies:

“Applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.”

In other words, the incorporation by reference under 37 CFR 1.57(b) only applies to inadvertently omitted material. If you choose not to include certain material from the prior application, it will remain omitted unless you specifically amend your application to include it.

To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:

1. The inadvertently omitted portion must be completely contained in the prior-filed application.
2. A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
3. If the prior-filed application is in a non-English language, an English language translation must be submitted.
4. The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.

The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

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

For more information on patent application requirements, visit: patent application requirements.

For more information on prior-filed application, visit: prior-filed application.

There are several key conditions that must be met to use incorporation by reference under 37 CFR 1.57(b):

1. The application must have been filed on or after September 21, 2004
2. Material must have been inadvertently omitted from the application
3. A priority or benefit claim to a prior-filed application must have been present on the filing date
4. The omitted material must be completely contained in the prior-filed application
5. An amendment to add the omitted material must be filed within the time period set by the USPTO
6. Other requirements like supplying copies of prior applications may apply

As stated in the MPEP: “The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(b):” followed by a list of specific conditions labeled (A) through (I).

The MPEP outlines several reasons why an amendment might not comply with 37 CFR 1.57(b). These include:

• The application was filed before September 21, 2004 (the effective date of the provisions)
• The claim for priority/benefit of the prior-filed application was not present on the filing date
• The omitted portion is not completely contained in the prior-filed application
• A copy of the prior-filed application was not submitted (except for applications filed under 35 U.S.C. 111)
• An English language translation of a non-English prior-filed application was not submitted
• The applicant did not identify where the omitted portion can be found in the prior-filed application

If any of these conditions are not met, the examiner will state that the amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(b) filed [date] is not in compliance with 37 CFR 1.57(b) because [specific reason].

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

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

When an examiner encounters a non-compliant amendment under 37 CFR 1.57(b), they follow a specific procedure outlined in the MPEP:

1. They use a form paragraph stating the non-compliance and the specific reason.
2. If the amendment introduces new matter, they follow up with additional form paragraphs (7.28 for specification/drawings, 7.31.01 for claims).
3. For after-final amendments, they issue an advisory action indicating that the amendment raises new issues due to non-compliance.

The MPEP notes, This form paragraph must be followed by form paragraph 7.28, where the amendment is made to the specification and/or drawings and introduces new matter into the disclosure, and/or form paragraph 7.31.01, where the amendment adds new matter to the claims or affects the claims.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

37 CFR 1.57(b) is closely tied to priority claims in patent applications. For an amendment to comply with this regulation, the claim for priority or benefit of the prior-filed application must have been present on the filing date of the current application.

The MPEP specifically states that an amendment may not comply with 37 CFR 1.57(b) if the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application. This requirement ensures that the incorporation by reference is based on a properly established relationship between the current application and the prior-filed application.

If the priority claim was not present at filing, the applicant cannot use 37 CFR 1.57(b) to incorporate material from the prior-filed application, even if that material was inadvertently omitted.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

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

For more information on patent applications, visit: patent applications.

To amend your application to include inadvertently omitted material under 37 CFR 1.57(b), you must:

1. File an amendment to include the omitted material within the time period set by the USPTO
2. Ensure the amendment is filed before the close of prosecution or abandonment of the application
3. Supply a copy of the prior-filed application (unless it’s a US application filed under 35 U.S.C. 111)
4. Provide an English translation if the prior-filed application is in a foreign language
5. Identify where the omitted material can be found in the prior-filed application

The MPEP states: “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 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.”

Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:

• It is only effective for the United States
• It does not affect the international filing date
• It cannot be used to accord an international filing date
• Requests to add omitted material will not be acted upon before national stage entry

The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”

No, incorporation by reference under 37 CFR 1.57(b) cannot be used to add material to a granted patent. This provision is only applicable during the application process, before a patent is granted. The MPEP clearly states:

“If, however, an application has been patented, a certificate of correction or a reissue application could not be used to add inadvertently omitted material to that patent via 37 CFR 1.57(b).”

Once a patent has been granted, other mechanisms such as reissue or certificate of correction would need to be considered for making changes or additions to the patent, subject to their own specific requirements and limitations.

The date September 21, 2004, is significant in relation to 37 CFR 1.57(b) because it marks the effective date of the provisions now contained in this regulation. The MPEP states that one reason an amendment might not comply with 37 CFR 1.57(b) is if the present application was filed before September 21, 2004, the effective date of the provisions now in 37 CFR 1.57(b).

This means that applications filed before this date cannot use the incorporation by reference procedure outlined in 37 CFR 1.57(b) to add inadvertently omitted material. For such applications, different rules and procedures would apply for addressing omitted material.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

For more information on effective date, visit: effective date.

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

Incorporation by reference under 37 CFR 1.57(b) is a provision that allows applicants to add inadvertently omitted material to a patent application if certain conditions are met. Specifically:

• The application must contain a priority or benefit claim to a prior-filed application
• The omitted material must be completely contained in that prior-filed application
• The omission must have been inadvertent

This provision acts as a safeguard for applicants when material is accidentally left out of an application due to clerical error. As stated in the MPEP, “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 (are) inadvertently omitted from an application, such as through a clerical error.”

If you intentionally omit material from your application that was present in a prior-filed application, the omitted material will not automatically be incorporated by reference under 37 CFR 1.57(b). The MPEP clarifies:

“Applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.”

In other words, the incorporation by reference under 37 CFR 1.57(b) only applies to inadvertently omitted material. If you choose not to include certain material from the prior application, it will remain omitted unless you specifically amend your application to include it.

To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:

1. The inadvertently omitted portion must be completely contained in the prior-filed application.
2. A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
3. If the prior-filed application is in a non-English language, an English language translation must be submitted.
4. The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.

The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

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

For more information on patent application requirements, visit: patent application requirements.

For more information on prior-filed application, visit: prior-filed application.

There are several key conditions that must be met to use incorporation by reference under 37 CFR 1.57(b):

1. The application must have been filed on or after September 21, 2004
2. Material must have been inadvertently omitted from the application
3. A priority or benefit claim to a prior-filed application must have been present on the filing date
4. The omitted material must be completely contained in the prior-filed application
5. An amendment to add the omitted material must be filed within the time period set by the USPTO
6. Other requirements like supplying copies of prior applications may apply

As stated in the MPEP: “The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(b):” followed by a list of specific conditions labeled (A) through (I).

The MPEP outlines several reasons why an amendment might not comply with 37 CFR 1.57(b). These include:

• The application was filed before September 21, 2004 (the effective date of the provisions)
• The claim for priority/benefit of the prior-filed application was not present on the filing date
• The omitted portion is not completely contained in the prior-filed application
• A copy of the prior-filed application was not submitted (except for applications filed under 35 U.S.C. 111)
• An English language translation of a non-English prior-filed application was not submitted
• The applicant did not identify where the omitted portion can be found in the prior-filed application

If any of these conditions are not met, the examiner will state that the amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(b) filed [date] is not in compliance with 37 CFR 1.57(b) because [specific reason].

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

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

When an examiner encounters a non-compliant amendment under 37 CFR 1.57(b), they follow a specific procedure outlined in the MPEP:

1. They use a form paragraph stating the non-compliance and the specific reason.
2. If the amendment introduces new matter, they follow up with additional form paragraphs (7.28 for specification/drawings, 7.31.01 for claims).
3. For after-final amendments, they issue an advisory action indicating that the amendment raises new issues due to non-compliance.

The MPEP notes, This form paragraph must be followed by form paragraph 7.28, where the amendment is made to the specification and/or drawings and introduces new matter into the disclosure, and/or form paragraph 7.31.01, where the amendment adds new matter to the claims or affects the claims.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

37 CFR 1.57(b) is closely tied to priority claims in patent applications. For an amendment to comply with this regulation, the claim for priority or benefit of the prior-filed application must have been present on the filing date of the current application.

The MPEP specifically states that an amendment may not comply with 37 CFR 1.57(b) if the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application. This requirement ensures that the incorporation by reference is based on a properly established relationship between the current application and the prior-filed application.

If the priority claim was not present at filing, the applicant cannot use 37 CFR 1.57(b) to incorporate material from the prior-filed application, even if that material was inadvertently omitted.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

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

For more information on patent applications, visit: patent applications.

To amend your application to include inadvertently omitted material under 37 CFR 1.57(b), you must:

1. File an amendment to include the omitted material within the time period set by the USPTO
2. Ensure the amendment is filed before the close of prosecution or abandonment of the application
3. Supply a copy of the prior-filed application (unless it’s a US application filed under 35 U.S.C. 111)
4. Provide an English translation if the prior-filed application is in a foreign language
5. Identify where the omitted material can be found in the prior-filed application

The MPEP states: “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 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.”

Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:

• It is only effective for the United States
• It does not affect the international filing date
• It cannot be used to accord an international filing date
• Requests to add omitted material will not be acted upon before national stage entry

The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”

No, incorporation by reference under 37 CFR 1.57(b) cannot be used to add material to a granted patent. This provision is only applicable during the application process, before a patent is granted. The MPEP clearly states:

“If, however, an application has been patented, a certificate of correction or a reissue application could not be used to add inadvertently omitted material to that patent via 37 CFR 1.57(b).”

Once a patent has been granted, other mechanisms such as reissue or certificate of correction would need to be considered for making changes or additions to the patent, subject to their own specific requirements and limitations.