Patent Law FAQ

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

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

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

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

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

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

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

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

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

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

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

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.”

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

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

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

n

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

n

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

n

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

n

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

n

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

n

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

n

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

n

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

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.”

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

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

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

n

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

n

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

n

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

n

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

n

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

n

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

n

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

n

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

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.”

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

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

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

n

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

n

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

n

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

n

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

n

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

n

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

n

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

n

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

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.”