Patent Law FAQ

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

The MPEP ¶ 2.11 mentions several U.S. Code sections relevant to claiming the benefit of an earlier filing date:

This application is claiming the benefit of prior-filed application No.[1] under 35 U.S.C. 120, 121, 365(c), or 386(c).

These sections cover different scenarios:

• 35 U.S.C. 120: Benefit of earlier filing date in the United States
• 35 U.S.C. 121: Divisional applications
• 35 U.S.C. 365(c): Benefit of earlier filing date; national application
• 35 U.S.C. 386(c): Benefit of earlier filing date; international design application

Each of these sections provides specific conditions under which an application can claim the benefit of an earlier filing date.

For more information on earlier filing date, visit: earlier filing date.

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

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

The right of priority allows an applicant who has filed a patent application in a foreign country to claim priority to that earlier filing date when filing a subsequent U.S. application for the same invention. This right is established by 35 U.S.C. 119 and gives the U.S. application the benefit of the earlier foreign filing date, as long as certain conditions are met.

Specifically, 35 U.S.C. 119(a) states: “An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed.”

To claim the benefit of an earlier filing date under 35 U.S.C. 120, the following requirements must be met:

• The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application
• The disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement
• The later-filed application must contain a specific reference to the prior application
• The later-filed application must be filed before the patenting or abandonment of or termination of proceedings on the first application

As stated in the MPEP: “To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.”

Priority in patent applications refers to the ability of a later-filed application to claim the benefit of, or priority to, an earlier-filed application. This allows the later application to effectively have the filing date of the earlier application for certain purposes.

According to the MPEP, “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”

When an abandoned application is later revived, it retains its original filing date. The revival process effectively removes the abandonment status, allowing the application to continue prosecution. However, the period of abandonment may impact patent term adjustment calculations. For more information on revival procedures, refer to MPEP 711 and 37 CFR 1.137.

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

No, the inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date.

See MPEP 2136.03 and MPEP 2154.01(b) for additional information.

No, the inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date.

See MPEP 2136.03 and MPEP 2154.01(b) for additional information.

When an abandoned application is later revived, it retains its original filing date. The revival process effectively removes the abandonment status, allowing the application to continue prosecution. However, the period of abandonment may impact patent term adjustment calculations. For more information on revival procedures, refer to MPEP 711 and 37 CFR 1.137.

The MPEP ¶ 2.11 mentions several U.S. Code sections relevant to claiming the benefit of an earlier filing date:

This application is claiming the benefit of prior-filed application No.[1] under 35 U.S.C. 120, 121, 365(c), or 386(c).

These sections cover different scenarios:

• 35 U.S.C. 120: Benefit of earlier filing date in the United States
• 35 U.S.C. 121: Divisional applications
• 35 U.S.C. 365(c): Benefit of earlier filing date; national application
• 35 U.S.C. 386(c): Benefit of earlier filing date; international design application

Each of these sections provides specific conditions under which an application can claim the benefit of an earlier filing date.

For more information on earlier filing date, visit: earlier filing date.

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

To claim the benefit of an earlier filing date under 35 U.S.C. 120, the following requirements must be met:

• The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application
• The disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement
• The later-filed application must contain a specific reference to the prior application
• The later-filed application must be filed before the patenting or abandonment of or termination of proceedings on the first application

As stated in the MPEP: “To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.”

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

The right of priority allows an applicant who has filed a patent application in a foreign country to claim priority to that earlier filing date when filing a subsequent U.S. application for the same invention. This right is established by 35 U.S.C. 119 and gives the U.S. application the benefit of the earlier foreign filing date, as long as certain conditions are met.

Specifically, 35 U.S.C. 119(a) states: “An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed.”

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

If corrected documents are not resubmitted within the specified period, the original filing date will not be preserved. The MPEP clearly states: “If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document.” This means that failing to meet the deadline for resubmission will result in the loss of the original filing date, and the new submission date will be used as the recording date.

If corrected documents are not resubmitted within the specified period, the original filing date will not be preserved. The MPEP clearly states: “If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document.” This means that failing to meet the deadline for resubmission will result in the loss of the original filing date, and the new submission date will be used as the recording date.

For applications properly filed under 37 CFR 1.10 using Priority Mail Express, the filing date is the date the application was deposited with the U.S. Postal Service. The MPEP states:

For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.

If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO.

Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.

Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.

A patent filing receipt includes:

• Application number
• Filing date
• Confirmation number
• Suggested class in the U.S. Patent Classification System
• Art unit number where the application is likely to be examined
• Continuing data (if applicable)
• National stage data (if applicable)
• Foreign priority data (if applicable)
• Foreign filing license data (if applicable)
• Entity status information
• Anticipated publication date under 35 U.S.C. 122(b)

The MPEP states: ‘The filing receipt includes the application number, filing date, a confirmation number, a suggested class in the U.S. Patent Classification System (see MPEP § 902.01), and the number of an art unit where the application is likely to be examined.’ (MPEP 503)

In the event of a postal interruption or emergency:

• An announcement will be placed on the USPTO website at www.uspto.gov
• A notice will be published in the Official Gazette
• These communications will provide instructions about filing patent applications and other papers related to patent applications and patents

The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.

As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

If the date of receipt stamp is illegible or missing, the USPTO will make every effort to determine the correct date of receipt. This may involve examining other evidence, such as postmarks, electronic filing receipts, or other documentation. If the correct date cannot be determined, the USPTO may use the date it was discovered that the document was received as the date of receipt. Applicants should always ensure that their submissions are properly dated and stamped to avoid potential issues with filing dates.

If a patent application is filed without all the pages of the specification, the USPTO will notify the applicant of the missing parts. The MPEP refers to this situation:

See MPEP § 601.01(d)-(g) where the application is filed without all the pages of the specification, without at least one claim (nonprovisional design application), without drawings, or without all the figures of the drawings.

For applications filed before September 16, 2012, a supplemental oath or declaration by the inventor may be required to identify the missing item and indicate that it accurately describes the invention. For applications filed on or after September 16, 2012, an additional oath or declaration is generally not required.

The applicant will be given a time period to submit the missing pages. If the missing pages are not submitted within the specified time, the application may be deemed incomplete and not accorded a filing date until the missing parts are received.

If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:

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.

The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.

If a nonprovisional patent application is filed without all required fees, the USPTO will send a notice to the applicant. According to the MPEP:

Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the… required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004))… In such cases, a notice is mailed by OPAP requiring the appropriate fees… accompanied by a surcharge (37 CFR 1.16(f)).

The applicant will be given a time period (usually two months) to pay the missing fees and surcharge to avoid abandonment of the application.

The filing date of a patent application is determined by the ‘Office Date’ stamp, provided the application includes all necessary components for a filing date. The MPEP states:

If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the ‘Office Date’ stamp establishes the ‘filing date.’

This means that the date stamped on the application by the USPTO becomes the official filing date, as long as all required elements are present. It’s crucial for applicants to ensure their submissions are complete to secure the earliest possible filing date.

The filing date for Priority Mail Express® submissions is typically determined by the “date accepted” on the Priority Mail Express® mailing label. According to MPEP 513:

Office personnel will routinely look to the Priority Mail Express® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence.

If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. It’s important to note that the “date accepted” must be completed by the USPS, not by the applicant.

You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):

1. File the petition promptly after becoming aware of the return or refusal
2. Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
3. Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
4. Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
5. The USPTO may require additional evidence to verify the interruption or emergency

As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”

An applicant can request review of a refusal to accord a filing date by filing a petition. The MPEP states:

Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

The petition should be marked to the attention of the Office of Petitions. If the applicant believes no defect exists, they may include a request for refund of the petition fee in the petition.

Priority Mail Express® submissions to the USPTO are treated differently in terms of dating. According to 37 CFR 1.6(a)(2):

Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express® with the United States Postal Service.

This means that new patent applications filed using Priority Mail Express® will be stamped with the date they were deposited with USPS, even if that date is a Saturday, Sunday, or federal holiday. The MPEP provides an example:

For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.

No, patent applications that are entitled to a filing date will not be returned to the applicant, even if requested. This applies to applications filed by regular mail, Priority Mail Express, hand-delivery, or through the USPTO patent electronic filing system.

The MPEP clearly states: ‘Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested.’ (MPEP 503)

Applicants should be careful not to file duplicate applications or applications not intended for filing, as fees paid for such applications are generally not refundable due to a change of purpose.

A patent filing receipt includes:

• Application number
• Filing date
• Confirmation number
• Suggested class in the U.S. Patent Classification System
• Art unit number where the application is likely to be examined
• Continuing data (if applicable)
• National stage data (if applicable)
• Foreign priority data (if applicable)
• Foreign filing license data (if applicable)
• Entity status information
• Anticipated publication date under 35 U.S.C. 122(b)

The MPEP states: ‘The filing receipt includes the application number, filing date, a confirmation number, a suggested class in the U.S. Patent Classification System (see MPEP § 902.01), and the number of an art unit where the application is likely to be examined.’ (MPEP 503)

No, patent applications that are entitled to a filing date will not be returned to the applicant, even if requested. This applies to applications filed by regular mail, Priority Mail Express, hand-delivery, or through the USPTO patent electronic filing system.

The MPEP clearly states: ‘Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested.’ (MPEP 503)

Applicants should be careful not to file duplicate applications or applications not intended for filing, as fees paid for such applications are generally not refundable due to a change of purpose.

If the date of receipt stamp is illegible or missing, the USPTO will make every effort to determine the correct date of receipt. This may involve examining other evidence, such as postmarks, electronic filing receipts, or other documentation. If the correct date cannot be determined, the USPTO may use the date it was discovered that the document was received as the date of receipt. Applicants should always ensure that their submissions are properly dated and stamped to avoid potential issues with filing dates.

The filing date of a patent application is determined by the ‘Office Date’ stamp, provided the application includes all necessary components for a filing date. The MPEP states:

If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the ‘Office Date’ stamp establishes the ‘filing date.’

This means that the date stamped on the application by the USPTO becomes the official filing date, as long as all required elements are present. It’s crucial for applicants to ensure their submissions are complete to secure the earliest possible filing date.

Priority Mail Express® submissions to the USPTO are treated differently in terms of dating. According to 37 CFR 1.6(a)(2):

Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express® with the United States Postal Service.

This means that new patent applications filed using Priority Mail Express® will be stamped with the date they were deposited with USPS, even if that date is a Saturday, Sunday, or federal holiday. The MPEP provides an example:

For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.

For applications properly filed under 37 CFR 1.10 using Priority Mail Express, the filing date is the date the application was deposited with the U.S. Postal Service. The MPEP states:

For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.

If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO.

If a patent application is filed without all the pages of the specification, the USPTO will notify the applicant of the missing parts. The MPEP refers to this situation:

See MPEP § 601.01(d)-(g) where the application is filed without all the pages of the specification, without at least one claim (nonprovisional design application), without drawings, or without all the figures of the drawings.

For applications filed before September 16, 2012, a supplemental oath or declaration by the inventor may be required to identify the missing item and indicate that it accurately describes the invention. For applications filed on or after September 16, 2012, an additional oath or declaration is generally not required.

The applicant will be given a time period to submit the missing pages. If the missing pages are not submitted within the specified time, the application may be deemed incomplete and not accorded a filing date until the missing parts are received.

If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:

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.

The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.

If a nonprovisional patent application is filed without all required fees, the USPTO will send a notice to the applicant. According to the MPEP:

Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the… required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004))… In such cases, a notice is mailed by OPAP requiring the appropriate fees… accompanied by a surcharge (37 CFR 1.16(f)).

The applicant will be given a time period (usually two months) to pay the missing fees and surcharge to avoid abandonment of the application.

An applicant can request review of a refusal to accord a filing date by filing a petition. The MPEP states:

Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

The petition should be marked to the attention of the Office of Petitions. If the applicant believes no defect exists, they may include a request for refund of the petition fee in the petition.

In the event of a postal interruption or emergency:

• An announcement will be placed on the USPTO website at www.uspto.gov
• A notice will be published in the Official Gazette
• These communications will provide instructions about filing patent applications and other papers related to patent applications and patents

The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.

As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):

1. File the petition promptly after becoming aware of the return or refusal
2. Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
3. Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
4. Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
5. The USPTO may require additional evidence to verify the interruption or emergency

As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”

Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.

Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.

The filing date for Priority Mail Express® submissions is typically determined by the “date accepted” on the Priority Mail Express® mailing label. According to MPEP 513:

Office personnel will routinely look to the Priority Mail Express® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence.

If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. It’s important to note that the “date accepted” must be completed by the USPS, not by the applicant.

The MPEP ¶ 2.11 mentions several U.S. Code sections relevant to claiming the benefit of an earlier filing date:

This application is claiming the benefit of prior-filed application No.[1] under 35 U.S.C. 120, 121, 365(c), or 386(c).

These sections cover different scenarios:

• 35 U.S.C. 120: Benefit of earlier filing date in the United States
• 35 U.S.C. 121: Divisional applications
• 35 U.S.C. 365(c): Benefit of earlier filing date; national application
• 35 U.S.C. 386(c): Benefit of earlier filing date; international design application

Each of these sections provides specific conditions under which an application can claim the benefit of an earlier filing date.

For more information on earlier filing date, visit: earlier filing date.

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

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

The right of priority allows an applicant who has filed a patent application in a foreign country to claim priority to that earlier filing date when filing a subsequent U.S. application for the same invention. This right is established by 35 U.S.C. 119 and gives the U.S. application the benefit of the earlier foreign filing date, as long as certain conditions are met.

Specifically, 35 U.S.C. 119(a) states: “An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed.”

For applications properly filed under 37 CFR 1.10 using Priority Mail Express, the filing date is the date the application was deposited with the U.S. Postal Service. The MPEP states:

For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.

If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO.

To claim the benefit of an earlier filing date under 35 U.S.C. 120, the following requirements must be met:

• The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application
• The disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement
• The later-filed application must contain a specific reference to the prior application
• The later-filed application must be filed before the patenting or abandonment of or termination of proceedings on the first application

As stated in the MPEP: “To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.”

Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.

Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.

Priority in patent applications refers to the ability of a later-filed application to claim the benefit of, or priority to, an earlier-filed application. This allows the later application to effectively have the filing date of the earlier application for certain purposes.

According to the MPEP, “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”

A patent filing receipt includes:

• Application number
• Filing date
• Confirmation number
• Suggested class in the U.S. Patent Classification System
• Art unit number where the application is likely to be examined
• Continuing data (if applicable)
• National stage data (if applicable)
• Foreign priority data (if applicable)
• Foreign filing license data (if applicable)
• Entity status information
• Anticipated publication date under 35 U.S.C. 122(b)

The MPEP states: ‘The filing receipt includes the application number, filing date, a confirmation number, a suggested class in the U.S. Patent Classification System (see MPEP § 902.01), and the number of an art unit where the application is likely to be examined.’ (MPEP 503)

When an abandoned application is later revived, it retains its original filing date. The revival process effectively removes the abandonment status, allowing the application to continue prosecution. However, the period of abandonment may impact patent term adjustment calculations. For more information on revival procedures, refer to MPEP 711 and 37 CFR 1.137.

In the event of a postal interruption or emergency:

• An announcement will be placed on the USPTO website at www.uspto.gov
• A notice will be published in the Official Gazette
• These communications will provide instructions about filing patent applications and other papers related to patent applications and patents

The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.

As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

If the date of receipt stamp is illegible or missing, the USPTO will make every effort to determine the correct date of receipt. This may involve examining other evidence, such as postmarks, electronic filing receipts, or other documentation. If the correct date cannot be determined, the USPTO may use the date it was discovered that the document was received as the date of receipt. Applicants should always ensure that their submissions are properly dated and stamped to avoid potential issues with filing dates.

If corrected documents are not resubmitted within the specified period, the original filing date will not be preserved. The MPEP clearly states: “If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document.” This means that failing to meet the deadline for resubmission will result in the loss of the original filing date, and the new submission date will be used as the recording date.

If a patent application is filed without all the pages of the specification, the USPTO will notify the applicant of the missing parts. The MPEP refers to this situation:

See MPEP § 601.01(d)-(g) where the application is filed without all the pages of the specification, without at least one claim (nonprovisional design application), without drawings, or without all the figures of the drawings.

For applications filed before September 16, 2012, a supplemental oath or declaration by the inventor may be required to identify the missing item and indicate that it accurately describes the invention. For applications filed on or after September 16, 2012, an additional oath or declaration is generally not required.

The applicant will be given a time period to submit the missing pages. If the missing pages are not submitted within the specified time, the application may be deemed incomplete and not accorded a filing date until the missing parts are received.

If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:

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.

The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.

If a nonprovisional patent application is filed without all required fees, the USPTO will send a notice to the applicant. According to the MPEP:

Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the… required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004))… In such cases, a notice is mailed by OPAP requiring the appropriate fees… accompanied by a surcharge (37 CFR 1.16(f)).

The applicant will be given a time period (usually two months) to pay the missing fees and surcharge to avoid abandonment of the application.

The filing date of a patent application is determined by the ‘Office Date’ stamp, provided the application includes all necessary components for a filing date. The MPEP states:

If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the ‘Office Date’ stamp establishes the ‘filing date.’

This means that the date stamped on the application by the USPTO becomes the official filing date, as long as all required elements are present. It’s crucial for applicants to ensure their submissions are complete to secure the earliest possible filing date.

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

The filing date for Priority Mail Express® submissions is typically determined by the “date accepted” on the Priority Mail Express® mailing label. According to MPEP 513:

Office personnel will routinely look to the Priority Mail Express® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence.

If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. It’s important to note that the “date accepted” must be completed by the USPS, not by the applicant.

You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):

1. File the petition promptly after becoming aware of the return or refusal
2. Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
3. Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
4. Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
5. The USPTO may require additional evidence to verify the interruption or emergency

As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”

An applicant can request review of a refusal to accord a filing date by filing a petition. The MPEP states:

Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

The petition should be marked to the attention of the Office of Petitions. If the applicant believes no defect exists, they may include a request for refund of the petition fee in the petition.

Priority Mail Express® submissions to the USPTO are treated differently in terms of dating. According to 37 CFR 1.6(a)(2):

Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express® with the United States Postal Service.

This means that new patent applications filed using Priority Mail Express® will be stamped with the date they were deposited with USPS, even if that date is a Saturday, Sunday, or federal holiday. The MPEP provides an example:

For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.

No, the inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date.

See MPEP 2136.03 and MPEP 2154.01(b) for additional information.

No, patent applications that are entitled to a filing date will not be returned to the applicant, even if requested. This applies to applications filed by regular mail, Priority Mail Express, hand-delivery, or through the USPTO patent electronic filing system.

The MPEP clearly states: ‘Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested.’ (MPEP 503)

Applicants should be careful not to file duplicate applications or applications not intended for filing, as fees paid for such applications are generally not refundable due to a change of purpose.

The MPEP ¶ 2.11 mentions several U.S. Code sections relevant to claiming the benefit of an earlier filing date:

This application is claiming the benefit of prior-filed application No.[1] under 35 U.S.C. 120, 121, 365(c), or 386(c).

These sections cover different scenarios:

• 35 U.S.C. 120: Benefit of earlier filing date in the United States
• 35 U.S.C. 121: Divisional applications
• 35 U.S.C. 365(c): Benefit of earlier filing date; national application
• 35 U.S.C. 386(c): Benefit of earlier filing date; international design application

Each of these sections provides specific conditions under which an application can claim the benefit of an earlier filing date.

For more information on earlier filing date, visit: earlier filing date.

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

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

The right of priority allows an applicant who has filed a patent application in a foreign country to claim priority to that earlier filing date when filing a subsequent U.S. application for the same invention. This right is established by 35 U.S.C. 119 and gives the U.S. application the benefit of the earlier foreign filing date, as long as certain conditions are met.

Specifically, 35 U.S.C. 119(a) states: “An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed.”

For applications properly filed under 37 CFR 1.10 using Priority Mail Express, the filing date is the date the application was deposited with the U.S. Postal Service. The MPEP states:

For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.

If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO.

To claim the benefit of an earlier filing date under 35 U.S.C. 120, the following requirements must be met:

• The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application
• The disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement
• The later-filed application must contain a specific reference to the prior application
• The later-filed application must be filed before the patenting or abandonment of or termination of proceedings on the first application

As stated in the MPEP: “To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.”

Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.

Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.

Priority in patent applications refers to the ability of a later-filed application to claim the benefit of, or priority to, an earlier-filed application. This allows the later application to effectively have the filing date of the earlier application for certain purposes.

According to the MPEP, “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”

A patent filing receipt includes:

• Application number
• Filing date
• Confirmation number
• Suggested class in the U.S. Patent Classification System
• Art unit number where the application is likely to be examined
• Continuing data (if applicable)
• National stage data (if applicable)
• Foreign priority data (if applicable)
• Foreign filing license data (if applicable)
• Entity status information
• Anticipated publication date under 35 U.S.C. 122(b)

The MPEP states: ‘The filing receipt includes the application number, filing date, a confirmation number, a suggested class in the U.S. Patent Classification System (see MPEP § 902.01), and the number of an art unit where the application is likely to be examined.’ (MPEP 503)

When an abandoned application is later revived, it retains its original filing date. The revival process effectively removes the abandonment status, allowing the application to continue prosecution. However, the period of abandonment may impact patent term adjustment calculations. For more information on revival procedures, refer to MPEP 711 and 37 CFR 1.137.

In the event of a postal interruption or emergency:

• An announcement will be placed on the USPTO website at www.uspto.gov
• A notice will be published in the Official Gazette
• These communications will provide instructions about filing patent applications and other papers related to patent applications and patents

The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.

As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

If the date of receipt stamp is illegible or missing, the USPTO will make every effort to determine the correct date of receipt. This may involve examining other evidence, such as postmarks, electronic filing receipts, or other documentation. If the correct date cannot be determined, the USPTO may use the date it was discovered that the document was received as the date of receipt. Applicants should always ensure that their submissions are properly dated and stamped to avoid potential issues with filing dates.

If corrected documents are not resubmitted within the specified period, the original filing date will not be preserved. The MPEP clearly states: “If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document.” This means that failing to meet the deadline for resubmission will result in the loss of the original filing date, and the new submission date will be used as the recording date.

If a patent application is filed without all the pages of the specification, the USPTO will notify the applicant of the missing parts. The MPEP refers to this situation:

See MPEP § 601.01(d)-(g) where the application is filed without all the pages of the specification, without at least one claim (nonprovisional design application), without drawings, or without all the figures of the drawings.

For applications filed before September 16, 2012, a supplemental oath or declaration by the inventor may be required to identify the missing item and indicate that it accurately describes the invention. For applications filed on or after September 16, 2012, an additional oath or declaration is generally not required.

The applicant will be given a time period to submit the missing pages. If the missing pages are not submitted within the specified time, the application may be deemed incomplete and not accorded a filing date until the missing parts are received.

If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:

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.

The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.

If a nonprovisional patent application is filed without all required fees, the USPTO will send a notice to the applicant. According to the MPEP:

Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the… required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004))… In such cases, a notice is mailed by OPAP requiring the appropriate fees… accompanied by a surcharge (37 CFR 1.16(f)).

The applicant will be given a time period (usually two months) to pay the missing fees and surcharge to avoid abandonment of the application.

The filing date of a patent application is determined by the ‘Office Date’ stamp, provided the application includes all necessary components for a filing date. The MPEP states:

If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the ‘Office Date’ stamp establishes the ‘filing date.’

This means that the date stamped on the application by the USPTO becomes the official filing date, as long as all required elements are present. It’s crucial for applicants to ensure their submissions are complete to secure the earliest possible filing date.

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

The filing date for Priority Mail Express® submissions is typically determined by the “date accepted” on the Priority Mail Express® mailing label. According to MPEP 513:

Office personnel will routinely look to the Priority Mail Express® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence.

If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. It’s important to note that the “date accepted” must be completed by the USPS, not by the applicant.

You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):

1. File the petition promptly after becoming aware of the return or refusal
2. Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
3. Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
4. Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
5. The USPTO may require additional evidence to verify the interruption or emergency

As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”

An applicant can request review of a refusal to accord a filing date by filing a petition. The MPEP states:

Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

The petition should be marked to the attention of the Office of Petitions. If the applicant believes no defect exists, they may include a request for refund of the petition fee in the petition.

Priority Mail Express® submissions to the USPTO are treated differently in terms of dating. According to 37 CFR 1.6(a)(2):

Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express® with the United States Postal Service.

This means that new patent applications filed using Priority Mail Express® will be stamped with the date they were deposited with USPS, even if that date is a Saturday, Sunday, or federal holiday. The MPEP provides an example:

For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.

No, the inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date.

See MPEP 2136.03 and MPEP 2154.01(b) for additional information.

No, patent applications that are entitled to a filing date will not be returned to the applicant, even if requested. This applies to applications filed by regular mail, Priority Mail Express, hand-delivery, or through the USPTO patent electronic filing system.

The MPEP clearly states: ‘Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested.’ (MPEP 503)

Applicants should be careful not to file duplicate applications or applications not intended for filing, as fees paid for such applications are generally not refundable due to a change of purpose.