What are the requirements for incorporating material from a prior-filed application under 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.

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.