What are the common reasons for non-compliance with 37 CFR 1.57(b)?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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.