200

OCR transcription for search; preserved printed pages are authoritative

# Chapter 200 Types, Cross-Noting, and Status of Application

201
Types of Applications

201.01
Sole

201.02
Joint

201.03
Convertibility of Application

201.04
Original or Parent

201.05
Reissue

201.06
Division

201.07
Continuation

201.08

Continuation-in-part

201.09
Substitute

201.10
Refile

201.11
Continuity Between Applications : When En-
titled to Filing Date

201.12
Assignment Carries Title

201.13
Right of Priority of Foreign Application

201.14
Right of Priority, Formal Requirements

201.14(a) Time for Filing Papers

201.14(b) Papers Required

201.14 (c) Practice

201.15
Right of Priority, Overcoming a Reference

201.16
Extension of Period of Priority, Public Law
· 690

201.17
Government Cases

202
Cross-Noting

202.01
In Specification

202.02
Notation On File Wrapper of Division, Con-
tinuation, Substitute, or Continuation-in-part
202.03
On File Wrapper When Priority Is Claimed for
Foreign Application

202.04
In Oath or Declaration

202.05
In Case of Reissues

203
Status of Applications

203.01
New

203.02

Rejected

203.03

Amended

203.04
Allowed or in Issue

203.05
Abandoned

203.06
Incomplete

203.07
Abandonment for Failure to Pay Issue Fee

203.08
Status Inquiries

## 201 Types of Applications

Patent applications fall under three broad
types: (1) applications for patent under 35
U.S.C. 101 relating to a "new and useful process,
machine, manufacture, or composition of mat-
ter, etc."; (2) applications for plant patents un-
der 35 U.S.C. 161; and (3) applications for de-

sign patents under 35 U.S.C. 171. The first
type of patents are sometimes referred to as
"utility" patents or "mechanical" patents when
being contrasted with plant or design patents.
The specialized procedure which pertains to the
examination of applications for design and
plant patents will be treated in detail in
Chapters 1500 and 1600, respectively.

## 201.01 Sole

An application wherein the invention is pre-
sented as that of a single person is termed a
sole application.

## 201.02 Joint

A joint application is one in which the in-
vention is presented as that of two or more
persons.

## 201.03 Convertibility of Application [R-29]

Rule 45. (b) If an application for patent has been
made through error and without any deceptive inten-
tion by two or more persons as joint inventors when
they were not in fact joint inventors, the application
may be amended to remove the names of those not in-
ventors upon filing a statement of the facts verified by
all of the original applicants, and an oath or declara-
tion as required by rule 65 by the applicant who is the
actual inventor, provided the amendment is diligently
made. Such amendment must have the written con-
sent of any assignee.

The required "statement of the facts verified
by all of the original applicants" must include
at the least, a recital of the circumstances, in-
cluding the relevant dates, of (1) the mis-
joinder and (2) the discovery of the mis-
joinder. Without such a showing of circum-
stances, no basis exists for a conclusion that
the application had been made in the names
of the original sole or joint applicant(s)
"through error and without any deceptive in-
tention", and no foundation is supplied for
a ruling that the amendment to remove the
names of those not inventors or include those
to be added as inventors was "diligently
made."

<!-- PageFooter="Rev. 29, July 1971" -->

<!-- PageBreak -->

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

On the matter of diligence, attention is di-
rected to the decision of the C.C.P.A. in Van
Otteren v. Hafner et al., 757 O.G. 1026; 126
USPQ 151.

It is possible to file a sole application to
take the place of the joint application, subject
to the requirements of rule 45.

For the procedure to be followed when the
joint application is involved in an interference,
see § 1111.07.

Conversion from a sole to a joint application
is permitted by 35 U.S.C. 116.

Rule 45. (c). If an application for patent has been
made through error and without any deceptive intention
by less than all the actual joint inventors, the applica-
tion may be amended to include all the joint inventors
upon filing a statement of the facts verified by, and an
oath or declaration as required by rule 65 executed by,
all the actual joint inventors, provided the amendment
is diligently made. Such amendment must have the
written consent of any assignee.

Any attempt to effect a second conversion, of
either type or to effect both types of conversion,
in a given application, must be referred to
the group director. The provisions of rule
312 apply to attempted conversions after allow-
ance and before issue. When any conversion
is effected, the file should be sent to the Appli-
cation Branch for a revision of its records.
Adding an inventor's name on the drawing is
done at applicant's request and expense. Can-
celling a name is ordinarily done without
charge.

An application which was filed by A and
amended to add B to form joint applicants AB,
cannot be again amended to make B the sole
applicant.

Where a person is added or removed as an
inventor during the prosecution of an applica-
tion before the Patent Office, problems may oc-
cur upon applicant claiming U.S. priority in a
foreign filed case. Therefore, examiners should
acknowledge any addition or removal of in-
ventors made in accordance with the practice
under rule 45 and include the following state-
ment in the next communication to applicant
or his attorney.

"In view of the papers filed
,
it has been found that this application, as
filed, through error and without any deceptive
intention (failed to include

as an actual joint inventor; or in-
cluded
as a joint inventor who
was not in fact a joint inventor) and accord-
ingly, this application has been corrected in
compliance with rule 45."

## 201.04 Original or Parent

The terms original and parent are inter-
changeably applied to the first of a series of

applications of an inventor, all disclosing a
given invention. Such invention may or may
not be claimed in the first application.

## 201.05 Reissue

A. reissue application is an application for a
patent to take the place of an unexpired patent
that is defective in some one or more particu-
lars. A detailed treatment of reissues will be
found in chapter 1400.

## 201.06 Division [R-29]

A later application for a distinct or inde-
pendent invention, carved out of a pending
application and disclosing and claiming only
subject matter disclosed in the earlier or parent
application, is known as a divisional applica-
tion or "division". Except as provided in rule
45, both must be by the same applicant. (See
below.) The divisional application should set
forth only that portion of the earlier disclosure
which is germane to the invention as claimed
in the divisional application.

In the interest of expediting the processing
of newly filed divisional applications, filed as
a result of a restriction requirement, applicants
are requested to include the appropriate Patent
Office classification of the divisional application
and the status and location of the parent
application, on the papers submitted. The
appropriate classification for the divisional
application may be found in the office communi-
cation of the parent case wherein the require-
ment was made. It is suggested that this
classification designation be placed in the
upper right hand corner of the letter of
transmittal accompanying these divisional
applications.

A design application is not to be considered
to be a division of a utility application, and
is not entitled to the filing date thereof, even
though the drawings of the earlier filed utility
application show the same article as that in the
design application. In re Campbell, 1954 C.D.
191; 101 USPQ 406; Certiorari denied 348
U.S. 858.

While a divisional application may depart
from the phraseology used in the parent case
there may be no departure therefrom in sub-
stance or variation in the drawing that would
amount to "new matter" if introduced by
amendment into the parent case. Compare
§§ 201.08 and 201.11.

## DIVISION-CONTINUATION PROGRAM

The current rule 147 divisional practice and
the "streamlined continuation" program set
forth in the notices of February 11, 1966 (824

<!-- PageFooter="Rev. 29, July 1971" -->

<!-- PageBreak -->

201.06

<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

O.G. 1) ; May 13, 1966 (827 O.G. 2) ; May 31,
1966 (828 O.G. 1085) and October 14, 1969 (869
O.G. 1) are superseded by a change in the rules
effective on September 1, 1971.

The practice under rule 60 permits persons
having authority to prosecute the prior applica-
tion to file a continuation or divisional appli-
cation without an oath or declaration, if the
continuation or divisional application is a copy
of the prior application as filed. However, some
of the claims in the prior application as filed
may be canceled by amendment in order to
reduce the filing fee. An amendment presenting
additional claims may accompany the request
for filing an application under rule 60 but such
amendment will not be entered until after the
filing date has been granted.

Form 54 is designed as an aid for use by both
applicant and the Patent Office and should
simplify filing and processing of applications
under rule 60.

Application copies may be prepared and sub-
mitted by the applicant, his attorney or agent,
provided they are verified as true copies. No
charges will be made for preparation of copies
that are retained by the Office. Formal bristol
board drawings are required as in other types
of applications.

Rule 60. Continuing application for invention dis-
closed and claimed in a prior application. A continua-
tion or divisional applicatin (filed under the conditions
specified in 85 U.S.C. 120 or 121), which discloses and
claims only subject matter disclosed in a prior applica-
tion may be filed as a separate application before the
patenting or abandonment of or termination of pro-
ceedings on the prior application. If the application
papers comprise a copy of the prior application as filed,
signing and execution by the applicant may be omitted
provided the copy either is prepared and certified by
the Patent Office or is prepared by the applicant and
verified by an affidavit or declaration by the applicant,
his attorney or agent, stating that it is a true copy of
the prior application as filed. Certification may be
omitted if the copy is prepared by and does not leave
the custody of the Patent Office. Only amendments
reducing the number of claims or adding a reference
to the prior application (rule 78(a) ) will be entered
before calculating the filing fee and granting of the
filing date.

Form 54 (modified) Division-continuation program
application transmittal form.

IN THE UNITED STATES PATENT OFFICE

Docket No.

THE COMMISSIONER OF PATENTS
Washington, D.C. 20231.

SIR : This is a request for filing a

☐
Continuation

application under 37 CFR 1.60,

☐
Divisional

of pending prior application Serial No.
filed on
of

(date)

(inventor)

for

(title of invention)

1\.
☐
Enclosed is a copy of the prior application as
originally filed and an affidavit or declaration
verifying it as a true copy.

2\.
☐
Prepare a copy of the prior application.
3.
☐
The filing fee is calculated below :

CLAIMS AS FILED, LESS ANY CLAIMS CANCELLED BY
AMENDMENT BELOW

For

Number filed

Number extra

Rate

Basic fee $65

Total claims.

-10=

×

$2

Independent clalms.

+1=

X

10 =

Total filing fee.

4\.
☐
The Commissioner is hereby authorized to
charge any fees which may be required, or
credit any overpayment to Account No.
A duplicate copy of this sheet is enclosed.
5.
☐
A check in the amount of $.
is enclosed.

6\.
☐
Cancel claims

7\.
☐
Amend the specification by inserting before the
first line the sentence : - This is a
☐
continu-
ation,
☐
division, of application Serial No.
filed

8\.
☐
Transfer the drawings from the prior applica-
tion to this application and abandon said prior
application as of the filing date accorded this
application. A duplicate copy of this sheet is
enclosed for filing in the prior application file.
8a.
☐
New formal drawings are enclosed.
9.
☐
The prior application is assigned to

10\.
☐
The power of attorney in the prior application
is to

(name, reg. No., and address)
a.
☐
The power appears in the original papers
the prior application.
b.
☐
Since the power does not appear in the
original papers, a copy of the power in
the prior application is enclosed.
c.
☐
Recognize as associate attorney and ad-
dress all future communications to

(name, reg. No., and address)

11\.
☐
A preliminary amendment is enclosed.

Signature
☐
Inventors (s)
☐
Assignee of Complete
Interest
☐
Attorney or agent

<!-- PageFooter="Rev. 81, Jan. 1972" -->

<!-- PageBreak -->

## 201.07

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

Since rule 45 (second paragraph) permits
the conversion of a joint application to a sole,
it follows that a new application, restricted to
divisible subject matter, filed during the pend-
ency of the joint application by one of the
joint applicants, in place of restricting and
converting the joint case, may properly be
identified as a division of the joint application.
In like manner under rule 45 (c), a new joint
application for divisible subject matter present
in a sole application may be identified as a divi-
sion if filed by the sole applicant and another
during the pendency of the sole. See § 201.11.

However, the following conditions must be
satisfied in each of the foregoing situations,

(a) It must appear that the parent appli-
cation was filed ""through error and without
any deceptive intention".

(b) On discovery of the mistake the new
application must be diligently filed and the
burden of establishing good faith rests with
the new applicant or applicants.

(c) There must be filed in the new applica-
tion the verified statement of facts required
by rule 45.

For notation to be put on the file wrapper by
the examiner in the case of a divisional ap-
plication see § 202.02.

## 201.07 Continuation [R-29]

A continuation is a second application for
the same invention claimed in a prior applica-
tion and filed before the original becomes
abandoned. Except as provided in rule 45,
the applicant in the continuing application
must be the same as in the prior application.

The disclosure presented in the continuation
must be the same as that of the original appli-
cation, i.e., the continuation should not include
anything which would constitute new matter
if inserted in the original application.

At any time before the patenting or abandon-
ment of or termination of proceedings on his
earlier application, an applicant may have re-
course to filing a continuation in order to intro-
duce into the case a new set of claims and to
establish a right to further examination by the
primary examiner.

For notation to be put on the file wrapper by
the examiner in the case of a continuation ap-
plication see § 202.02.

The Streamlined Continuation Program has
been superseded by the rule 60 practice which
became effective on September 1, 1971 (36 F.R.
12689). See § 201.06.

## 201.08 Continuation-in-Part [R-22]

A continuation-in-part is an application filed
during the lifetime of an earlier application by
the same applicant, repeating some substantial
portion or all of the earlier application and
adding matter not disclosed in the said earlier
case. (In re Klein, 1930 C.D. 2; 393 O.G.
519.)

A continuation-in-part filed by a sole appli-
cant may also derive from an earlier joint
application showing a portion only of the sub-
ject matter of the later application, subject to
the conditions stated in the case of a sole divi-
sional application stemming from a joint ap-
plication (§ 201.06). Subject to the same con-
ditions, a joint continuation-in-part application
may derive from an earlier sole application.

<!-- PageFooter="Rev. 31, Jan. 1972" -->

<!-- PageBreak -->

<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

For notation to be put on the file wrapper by
the Examiner in the case of a continuation-in-
part application see § 202.02. [R-25]

## 201.09 Substitute [R-25]

The use of the term "Substitute" to desig-
nate an application which is in essence the
duplicate of an application by the same appli-
cant abandoned before the filing of the later
case, finds official recognition in the decision,
Ex parte Komenak, 1940 C.D. 1; 512 O.G. 739.
Current practice does not require applicant to
insert in the specification reference to the earlier
case. The notation on the file wrapper (See
§ 202.02) that one case is a "Substitute" for an-
other is printed in the heading of the patent
copies. See § 201.11.

As is explained in § 201.11 a "Substitute" does
not obtain the benefit of the filing date of the
prior application.

## 201.10 Re-file

No official definition has been given the term
Re-file, though it is sometimes used as an alter-
native for the term Substitute.

If the applicant designates his application as
"re-file" and the Examiner finds that the appli-
cation is in fact a duplicate of a former appli-
cation by the same party which was abandoned
prior to the filing of the second case, the Ex-
aminer should require the substitution of the
word substitute for "re-file," since the former
term has official recognition. The endorsement
on the file wrapper that the case is a "substi-
tute" will result in the further endorsement by
the Assignment Branch of any assignment of
the parent case that may have been made.

## 201.11 Continuity Between Applica- tions: When Entitled to Filing Date [R-25]

Under certain circumstances an application
for patent is entitled to the benefit of the filing
date of a prior application of the same inven-
tor. The conditions are specified in 35 U.S.C.
120.

35 U.S.C. 120. Benefit of earlier fling date in the
United States. An application for patent for an in-
vention disclosed in the manner provided by the first
paragraph of section 112 of this title in an application
previously filed in the United States by the same in-
ventor shall have the same effect, as to such inven-
tion, as though filed on the date of the prior applica-
tion, if filed before the patenting or abandonment of
or termination of proceedings on the first application
or on an application similarly entitled to the benefit of
the filing date of the first application and if it con-
tains or is amended to contain a specific reference to
the earlier filed application.

There are three conditions in addition to the
basic requirement that the two applications
be by the same inventor :

1\. The second application (which is called a
continuing application) must be an application
for a patent for an invention which is also
disclosed in the first application (the parent or
original application) ; the disclosure of inven-
tion in the first application and in the second
application must be sufficient to comply with the
requirements of the first paragraph of 35 U.S.C.
112\.

2\. The continuing application must be co-
pending with the first application or with an
application similarly entitled to the benefit of
the filing date of the first application.

3\. The continuing application must contain
a specific reference to the prior application (s)
in the specification.

The term "same inventor" has been construed
in In re Schmidt, 1961 C.D. 542; 772 O.G. 897,
to include a continuing application of a sole
inventor derived from an application of joint
inventors where a showing was made that the
joinder involved error without any deceptive
intent (35 U.S.C. 116). See § 201.06.

## COPENDENCY

Copendency is defined in the clause which
requires that the second application must be
filed before (a) the patenting, or (b) the
abandonment of, or (c) the termination of
proceedings in the first application.

If the first application issues as a patent, it
is sufficient for the second application to be co-
pending with it if the second application is
filed on the same day or before the patenting
of the first application. Thus, the second ap-
plication may be filed while the first is still
pending before the Examiner, while it is in
issue, or even between the time the issue fee is
paid and the patent issues.

If the first application is abandoned, the
second application must be filed before the
abandonment in order for it to be copending
with the first. The term "abandoned," refers to
abandonment for failure to prosecute (§ 711.02),
express abandonment (§ 711.01), and abandon-
ment for failure to pay the issue fee (§ 712).
If an abandoned application is revived (§ 711.03
(c) ) or a petition for late payment of the issue
fee (§ 712) is granted by the Commissioner, it
becomes reinstated as a pending application and
the preceding period of abandonment has no
effect.

The expression "termination of proceedings"
is new in the statute, although not new in
practice. Proceedings in an application are
obviously terminated when it is abandoned or

<!-- PageFooter="Rev. 25, July 1970" -->

<!-- PageBreak -->

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

when a patent has been issued, and hence this
expression is the broadest of the three. There
are several other situations in which proceed-
ings are terminated as is explained in
§ 711.02 (c).

When proceedings in an application are ter-
minated, the application is treated in the same
manner as an abandoned application, and the
term "abandoned application" may be used
broadly to include such applications.

The term "continuity" is used to express the
relationship of copendency of the same subject
matter in two different applications of the
same inventor, and the second application may
be referred to as a continuing application.
Continuing applications include those applica-
tions which are called divisions, continuations,
and continuations-in-part. As far as the right
under the statute is concerned the name used
is immaterial, the names being merely expres-
sions developed for convenience. The statute is
so worded that the first application may con-
tain more than the second, or the second applica-
tion may contain more than the first, and in
either case the second application is entitled to
the benefit of the filing date of the first as to the
common subject matter.

## REFERENCE TO FIRST APPLICATION

The third requirement of the statute is that
the second (or subsequent) application must
contain a specific reference to the first applica-
tion. This should appear as the first sentence
of the specification following the title and ab-
stract. In the case of design applications, it
should appear as set forth in § 1503.01. In view
of this requirement, the right to rely on a prior
application may be waived or refused by an ap-

plicant by refraining from inserting a refer-
ence to the prior application in the specification
of the later one. If the Examiner is aware of
the fact that an application is a continuing ap-
plication of a prior one, he should merely call
attention to this in an Office action, for example,
in the following language:

"It is noted that this application appears
to claim subject matter disclosed in appli-
cant's prior copending application Serial No.
filed
A reference to this
prior application must be inserted in the
specification of the present application if ap-
plicant intends to rely on the filing date of the
prior application, Rule 78."

În Rule 147 (certified copy) divisional cases,
applicant, in his amendment canceling the non-
elected claims, should include directions to enter
"This is a division of application Serial No.
filed
" as the first sentence.
following the abstract. Where the applicant
has inadvertently failed to do this and the Rule
147 divisional case is otherwise ready for al-
lowance, the Examiner should insert the quoted
sentence by Examiner's Amendment.

If the Examiner is aware of a prior applica-
tion he should note it in an Office action, as in-
dicated above, but should not require the appli-
cant to call attention to the prior application.

Applications are sometimes filed with a divi-
sion, continuation, or continuation-in-part
oath or declaration, in which the oath or decla-
ration refers back to a prior application. If
there is no reference in the specification, in such
cases, the Examiner should merely call atten-
tion to this fact in his Office action, utilizing,
for example, the language suggested in the first
paragraph of this subsection.

<!-- PageFooter="Rev. 25, July 1970" -->

<!-- PageBreak -->

# 201.13

<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

Where the applicant has inadvertently failed
to make a reference to the parent case in a
streamlined continuation which is otherwise
ready for issue the Examiner should insert the
required reference by Examiner's Amendment.

Sometimes a pending application is one of a
series of applications wherein the pending ap-
plication is not copending with the first filed
application but is copending with an intermedi-
ate application entitled to the benefit of the
filing date of the first application. If applicant
desires that the pending application have the
benefit of the filing date of the first filed applica-
tion he must, besides making reference in the
specification to the intermediate application,
also make reference in the specification to the
first application. See Hovlid v. Asari et al.,
134 USPQ 162; 305 F. 2d 747 and Sticker In-
dustrial Supply Corp. v. Blaw-Knox Co. et al.,
160 USPQ 177.

There is no limit to the number of prior appli-
cations through which a chain of copendency
may be traced to obtain the benefit of the filing
date of the earliest of a chain of prior copending
applications. See In re Henriksen, 158 USPQ
224; 853 O.G. 17.

A second application which is not copending
with the first application, which includes those
called substitutes in § 201.09, is not entitled
to the benefit of the filing date of the prior ap-
plication and the bars to the grant of a patent
are computed from the filing date of the second
application. An applicant is not required to
refer to such applications in the specification
of the later filed application. If the Examiner
is aware of such a prior abandoned applica-
tion he should make a reference to it in an
Office action in order that the record of the
second application will show this fact. In the
case of a "Substitute" application, the notation
on the file wrapper is printed in the heading
of the patent copies and thus calls attention
to the relationship of the two cases.

If an applicant refers to a prior noncopend-
ing abandoned application in the specification,
the manner of referring to it should make it
evident that it was abandoned before filing the
second.

For notations to be placed on the file wrap-
per in the case of continuing applications see
§§ 202.02 and 1302.09.

WHEN NOT ENTITLED TO BENEFIT OF FILING
DATE

Where the first application is found to be
fatally defective because of insufficient disclo-
sure to support allowable claims, a second appli-
cation filed as a "continuation-in-part" of the
first application to supply the deficiency is not
entitled to the benefit of the filing date of the

first application. Hunt Co. v. Mallinckrodt
Chemical Works, 83 USPQ 277 at 281 and cases
cited therein. [R-24]

## 201.12 Assignment Carries Title [R-24]

Assignment of an original application car-
ries title to any divisional, continuation, sub-
stitute or reissue application stemming from
the original application and filed after the date
of assignment. See § 306.

## 201.13 Right of Priority of Foreign Application [R-24]

Under certain conditions and on fulfilling
certain requirements, an application for patent
filed in the United States may be entitled to
the benefit of the filing date of a prior applica-
tion filed in a foreign country, to overcome an
intervening reference or for similar purposes.
The conditions are specified in 35 U.S.C. 119.

$5 U.S.C. 119. Benefit of earlier filing date in for-
eign country; right to priority. 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, shall have the same effect as
the same application would have if filed in this coun-
try 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 twelve months from the earliest date on which
such foreign application was filed ; but no patent shall
be granted on any application for patent for an inven-
tion which had been patented or described in a
printed publication in any country more than one
year before the date of the actual filing of the appli-
cation in this country, or which had been in public
use or on sale in this country more than one year
prior to such filing.

No application for patent shall be entitled to this
right of priority unless a claim therefor and a certified
copy of the original foreign application, specification
and drawings upon which it is based are filed in the
Patent Office before the patent is granted, or at such
time during the pendency of the application as required
by the Commissioner not earlier than six months after
the filing of the application in this country. Such cer-
tification shall be made by the patent office of the
foreign country in which filed and show the date of
the application and of the filing of the specification
and other papers. The Commissioner may require a
translation of the papers filed if not in the English
language and such other information as he deems
necessary.

<!-- PageFooter="Rev. 24, Apr. 1970" -->

<!-- PageBreak -->

## 201.13

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

In like manner and subject to the same conditions
and requirements, the right provided in this section
may be based upon a subsequent regularly filed appli-
cation in the same foreign country instead of the first
filed foreign application, provided that any foreign
application filed prior to such subsequent application
has been withdrawn, abandoned, or otherwise disposed
of, without having been laid open to public inspection
and without leaving any rights outstanding, and has
not served, nor thereafter shall serve, as a basis for
claiming a right of priority.

The period of twelve months specified in this
section is six months in the case of designs, 35
U.S.C. 172. See § 1506.

The conditions, for benefit of the filing date
of a prior application filed in a foreign country,
may be listed as follows:

1\. The foreign application must be one filed
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."

2\. The foreign application must have been
filed by the same applicant (inventor) as the
applicant in the United States, or by his legal
representatives or assigns.

3\. The application in the United States must
be filed within twelve months from the date
of the earliest foreign filing in a "recognized"
country as explained below.

4\. The foreign application must be for the
same invention as the application in the United
States.

## RECOGNIZED COUNTRIES OF FOREIGN FILING

The right to rely on a foreign application is
known as the right of priority in international
patent law and this phrase has been adopted
in our statute. The right of priority origi-
nated in a multilateral treaty of 1883, to which
the United States adhered in 1887, known as
the International Convention for the Protection
of Industrial Property. This treaty has been
revised several times, the latest revision in effect
being written in Lisbon in 1958. The treaty
was last revised in Stockholm in July, 1967
(copy at 852 O.G. 511) but this revision has not
yet become effective. One of the many provisions
of the treaty requires each of the adhering coun-
tries to accord the right of priority to the na-
tionals of the other countries and the first
United States statute relating to this subject was
enacted to carry out this obligation. There is
another treaty between the United States and
some Latin American countries which also
provides for the right of priority, and a foreign
country may also provide for this right by re-
ciprocal legislation.

NOTE: Following is a list of countries with
respect to which the right of priority referred
to in 35 U.S.C. 119 has been recognized. The
authority in the case of these countries is the
International Convention for the Protection of
Industrial Property (613 O.G. 23, 53 Stat.
1748), indicated by the letter I following the
name of the country; the Inter-American Con-
vention relating to Inventions, Patents, De-
signs and Industrial Models, signed at Buenos
Aires August 20, 1910 (207 O.G. 935, 38 Stat.
1811), indicated by the letter P after the name
of the country; or reciprocal legislation in the
particular country, indicated by the letter L
following the name of the country. Algeria
(I), Argentina (I), Australia (I), Austria (I),
Belgium (I), Brazil (I, P), Bulgaria (I),
Cameroon (I), Canada (I), Central African
Republic (I), Ceylon (I), Chad, Republic of
(I), Congo, Republic of (Brazzaville) (I),
Costa Rica (P), Cuba (I, P), Cyprus (I),
Czechoslovakia (I), Dahomey (I), Denmark
(I), Dominican Republic (I, P), Ecuador (P),
Finland (I), France (I), Gabon (I), Germany,
Federal Republic of (I), Greece (I), Guatemala
(P), Haiti (I, P), Honduras (P), Hungary (I),
Iceland (I), Indonesia (I), Iran (I), Ireland
(I), Israel (I), Italy (I), Ivory Coast, Republic
of (I), Japan (I), Kenya (I), Korea (L),
Lebanon (I), Liechenstein (I), Luxembourg
(I), Malagasy, Republic of (I), Malawi (I),
Malta (I), Mauritania (I), Mexico (I), Mon-
aco (I), Morocco (I), Netherlands (I), New
Zealand (I), Nicaragua (P), Niger (I), Ni-
geria, Federation of (I), Norway (I), Pan-
ama (P), Paraguay (P), Philippines (I),
Poland (I), Portugal (I), Rhodesia (I),
Romania (I), San Marino (I), Senegal, Repub-
lic of (I), Spain (I), Sweden (I), Switzerland
(I), Syrian Arab Republic (I), Tanzania (I),
Togo (I), Trinidad and Tobago (I), Tunisia
(I), Turkey (I), Uganda (I), Union of South
Africa (I), U.S.S.R. (I), United Arab Repub-
lic (Egypt) (I), United Kingdom (I), Upper
Volta, Republic of (I), Uruguay (I, P),
Vatican City (I) Viet-Nam (I), Yugoslavia
(I), Zambia (I).

If any applicant asserts the benefit of the
filing date of an application filed in a country
not on this list, the Examiner should inquire to
determine if there has been any change in the
status of that country. It should be noted that
the right is based on the country of the foreign
filing and not upon the citizenship of the
applicant.

## IDENTITY OF INVENTORS

The inventors of the U.S. application and of
the foreign application must be the same, for a

<!-- PageFooter="Rev. 24, Apr. 1970" -->

<!-- PageBreak -->

<!-- PageHeader="201.13" -->
<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATIONS" -->

right of priority does not exist in the case of
an application of inventor A in the foreign
country and inventor B in the United States,
even though the two applications may be
owned by the same party. However the appli-
cation in the foreign country may have been
filed by the assignee, or by the legal represent-
ative or agent of the inventor which is per-
mitted in some foreign countries, rather than
by the inventor himself, but in such cases the
name of the inventor is usually given in the
foreign application on a paper filed therein. An
indication of the identity of inventors made in
the oath or declaration accompanying the U.S.
application by identifying the foreign applica-
tion and stating that the foreign application
had been filed by the assignee, or the legal rep-
resentative, or agent, of the inventor, or on be-
half of the inventor, as the case may be, is
acceptable.

# TIME FOR FILING U.S. APPLICATION

The United States application must be filed
within twelve months of the foreign filing .. In
computing this twelve months, the first day is
not counted; thus, if an application was filed
in Canada on January 2, 1952, the U.S. appli-
cation may be filed on January 2, 1953. The
Convention specifies in Article 4℃ (2) that
"the day of filing is not counted in this
period." (This is the usual method of comput-
ing periods, for example a six month period for
reply to an Office action dated January 2 does
not expire on July 1 but the reply may be
made on July 2.) If the last day of the twelve
months is a Sunday or a holiday within the
District of Columbia, the U.S. application is in
time if filed on the next succeeding business
day; thus, if the foreign application was filed
on September 6, 1952, the U.S. application is
in time if filed on September 8, 1953, since
September 6, 1953 was a Sunday and Septem-
ber 7, 1953 was a holiday. Since January 1,
1953, the Patent Office has not received appli-
cations on Saturdays and, in view of 35 U.S.C.
21, and the Convention which provides "if the
last day of the period is a legal holiday, or a
day on which the Patent Office is not open to
receive applications in the country where pro-
tection is claimed, the period shall be extended
until the next working day" (Article 4C3), if
the twelve months expires on Saturday, the
U.S. application may be filed on the following
Monday.

# FIRST FOREIGN APPLICATION

The twelve months is from the earliest for-
eign filing. If an inventor has filed an appli-

cation in France on January 2, 1952, and an
application in Great Britain on March 3, 1952,
and then files in the United States on Febru-
ary 2, 1953, he is not entitled to the right of
priority at all; he would not be entitled to the
benefit of the date of the French application
since this application was filed more than
twelve months before the U.S. application, and
he would not be entitled to the benefit of the
date of the British application since this appli-
cation is not the first one filed. If the first
foreign application was filed in a country
which is not recognized with respect to the
right of priority, it is disregarded for this
purpose.

Public Law 87-338 extended the right of
priority to "subsequent" foreign applications if
one earlier filed had been withdrawn, aban-
doned or otherwise disposed of, under certain
conditions and for certain countries only.

Great Britain and a few other countries have
a system of "post-dating" whereby the filing
date of an application is changed to a later date.
This "post-dating" of the filing date of the ap-
plication does not affect the status of the appli-
cation with respect to the right of priority; if
the original filing date is more than one year
prior to the U.S. filing no right of priority can
be based upon the application.

If an applicant has filed two foreign applica-
tions in recognized countries, one outside the
year and one within the year, and the later
application discloses additional subject matter,
a claim in the U.S. application specifically
limited to the additional disclosure would be
entitled to the date of the second foreign ap-
plication since this would be the first foreign
application for that subject matter.

# EFFECT OF RIGHT OF PRIORITY

The right to rely on the foreign filing ex-
tends to overcoming the effects of intervening
references or uses, but there are certain re-
strictions. For example the one year bar of
35 U.S.C. 102(b) dates from the U.S. filing
date and not from the foreign filing date; thus
if an invention was described in a printed pub-
lication, or was in public use in this country,
in November 1952, a foreign application filed
in January 1953, and a U.S. application filed
in December 1953, granting a patent on the
U.S. application is barred by the printed pub-
lication or public use occurring more than one
year prior to its actual filing in the U.S.

The right of priority can be based upon an
application in a foreign country for a so-called
"utility model," called Gebrauchmuster in Ger-
many.

<!-- PageFooter="Rev. 80, Oct. 1971" -->

<!-- PageBreak -->

# 201.14

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

## INVENTORS' CERTIFICATES

At present, the Patent Office does not recog-
nize a right of priority based upon an appli-
cation for an Inventors' Certificate such as used
in the U.S.S.R. However, a claim for priority
and a certificated copy of an application for
Inventors' Certificate are entered in the file of
the U.S. application and are retained therein.
This allows the applicant to urge the right of
priority in possible later court action.

# 201.14 Right of Priority, Formal Re- quirements [R-30]

Under the statute (35 U.S.C. 119, second para-
graph), an applicant who wishes to secure the
right of priority must comply with certain
formal requirements within a time specified.
If these requirements are not complied with
the right of priority is lost and cannot there-
after be asserted.

The requirements of the statute are (a) that
the applicant must file a claim for the right
and (b) he must also file a certified copy of the
original foreign application ; these papers must
be filed within a certain time limit. The maxi-
mum time limit specified in the statute is that
the papers must be filed before the patent is
granted, but the statute gives the Commis-
sioner authority to set this time limit at an
earlier time during the pendency of the appli-
cation. If the required papers are not filed
within the time limit set the right of priority
is lost. A. reissue was granted in Brenner v. State
of Israel, 862 O.G. 661; 158 USPQ 584, where
the only ground urged was failure to file a certi-
fied copy of the original foreign application to
obtain the right of foreign priority under 35
U.S.C. 119 before the patent was granted.

It should be particularly noted that these
papers must be filed in all cases even though
they may not be necessary during the pendency
of the application to overcome the date of any
reference. The statute also gives the Commis-
sioner authority to require a translation of the
foreign documents if not in the English lan-
guage and such other information as he may
deem necessary.

Rule 65 requires that the oath or declaration
shall state whether or not any application for
patent on the same invention has been filed in
any foreign country either by the applicant or
by his legal representatives or assigns; if any
foreign application has been filed the applicant
must state the country and the date of filing of
the earliest such application and he must also
identify every foreign application which was
filed more than twelve months before the filing
of the application in this country. If all for-

eign applications have been filed within twelve
months of the U.S. filing the applicant is re-
quired to recite only the first such application
and it should be clear in the recitation that the
foreign application referred to is the first filed
foreign application.

The requirements for recitation of foreign
applications in the oath or declaration, while
serving other purposes as well, are used in con-
nection with the right of priority.

# 201.14(a) Right of Priority, Time for Filing Papers [R-30]

The time for filing the priority papers re-
quired by the statute is specified in the second
paragraph of rule 55.

Rule 55(b). An applicant may claim the benefit of
the filing date of a prior foreign application under the
conditions specified in 35 U.S.C. 119. The claim to pri-
ority need be in no special form and may be made by the
attorney or agent if the foreign application is re-
ferred to in the oath or declaration as required by rule
65. The claim for priority and the certified copy of the
foreign application specified in the second paragraph of
35 U.S.C. 119 must be filed in the case of interference
(rule 224) ; when necessary to overcome the date of a
reference relied upon by the examiner; or when spe-
cifically required by the examiner, and in all other
cases they must be filed not later than the date the
issue fee is paid. If the papers filed are not in the
English language, a translation need not be filed except
in the three particular instances specified in the preced-
ing sentence, in which event a sworn translation or a
translation certified as accurate by a sworn or official
translator must be filed.

It should first be noted that the Commis-
sioner has by rule specified an earlier ultimate
date than the date the patent is granted for
filing a claim and a certified copy. The latest
time at which the papers may be filed is the
date of the payment of the issue fee, except
that, under certain circumstances, they are re-
quired at an earlier date. These circumstances
are specified in the rule as (1) in the case of
interferences in which event the papers must
be filed within the time specified in the inter-
ference rules, (2) when necessary to overcome
the date of a reference relied upon by the exam-
iner, and (3) when specifically required by the
examiner.

In view of the shortened periods for prose-
cution leading to allowances, it is recommended
that priority papers be filed as early as possible.
Although rule 55 permits the filing of priority
papers up to and including the date for pay-
ment of the issue fee, it is advisable that such
papers be filed promptly after filing the appli-
cation. Frequently, priority papers are found
to be deficient in material respects, such as,
for example, the failure to include the correct
certified copy, and there is not sufficient time
to remedy the defect. Occasionally a new oath

<!-- PageFooter="Rev. 30, Oct. 1971" -->

<!-- PageBreak -->

<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

201.14(b)

or declaration may be necessary where the
original oath or declaration omits the reference
to the foreign filing date for which the benefit is
claimed. The early filing of priority papers
would thus be advantageous to applicants in
that it would afford time to explain any in-
consistencies that exist or to supply any addi-
tional documents that may be necessary.

It is also suggested that a pencil notation of
the serial number of the corresponding U.S.
application be placed on the priority papers.

# 201.14(b) Rights of Priority, Papers Required [R-30]

The main purpose for requiring the filing of
the priority papers is to make the record of the

file of the United States patent complete. The
Patent Office does not examine the papers to
determine whether the applicant is in fact en-
titled to the right of priority and does not grant
or refuse the right of priority, except as de-
scribed in § 201.15 and in cases of interferences.

The papers required are the claim for pri-
ority and the certified copy of the foreign
application. The claim to priority need be in no
special form, and may be made by the attorney
or agent at the time of transmitting the certified
copy if the foreign application is the one re-
ferred to in the oath or declaration of the U.S.
application. No special language is required in
making the claim for priority and any expres-
sion which can be reasonably interpreted as

<!-- PageFooter="Rev. 30, Oct. 1971" -->

<!-- PageBreak -->

201.14(c)

<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

claiming the benefit of the foreign application
is accepted as the claim for priority. The
claim for priority may appear in the oath or
declaration with the recitation of the foreign
application.

The certified copy which must be filed is a
copy of the original foreign application with a
certification by the patent office of the foreign
country in which it was filed. Certified copies
ordinarily consist of a copy of the specification
and drawings of the application as filed with a
certificate of the foreign patent office giving
certain information. "Application" in this con-
nection is not considered to include formal
papers such as a petition. A copy of the for-
eign patent as issued does not comply since the
application as filed is required; however, a
copy of the printed specification and drawing
of the foreign patent is sufficient if the certifi-
cation indicates that it corresponds to the ap-
plication as filed. A French patent stamped
"Service De La Propriété Industrielle-Con-
forme Aux Piéces Déposées A L' Appui de La
Demande" and additionally bearing a signed
seal is also acceptable in lieu of a certified copy
of the French application.

When the claim to priority and the certified
copy of the foreign application are received
while the application is pending before the ex-
aminer, the examiner should make no exam-
ination of the papers except to see that they
correspond in date and country to the appli-
cation identified in the oath or declaration and
contain no obvious formal defects. The subject
matter of the application is not examined to
determine whether the applicant is actually en-
titled to the benefit of the foreign filing date on
the basis of the disclosure thereof.

# DURING INTERFERENCE

If priority papers are filed in an interfer-
ence, it is not necessary to file an additional
certified copy in the application file. The in-
terference examiner will place them in the ap-
plication file.

# CONTINUING APPLICATIONS, REISSUES

Where the benefit of a foreign filing date is
claimed in a continuing application or in a re-
issue application and a certified copy has been
received in the parent case, it is not necessary
to file an additional certified copy in the later
case. The applicant when making the claim
for priority may simply call attention to the
fact that the certified copy is in the parent
application. In such cases the examiner should
acknowledge the claim with a statement as
follows:

[1] "Applicant's claim for priority, based on
papers filed in parent application Serial No.
submitted under 35 U.S.C. 119, is
acknowledged."

If the applicant fails to call attention to the
fact that the certified copy is in the parent ap-
plication and the examiner is aware of the fact
that the parent of a continuing application has
fully complied with the requirements of 35
U.S.C. 119 and is therefore entitled to the bene-
fit of the filing date of an earlier filed foreign
application, he should direct it to the appli-
cant's attention in an Office action, as in the
following exemplary language:

[2] "Applicant is reminded that in order to
be entitled to priority based on papers filed in
parent application Serial No. ______ under
35 U.S.C. 119, a claim for such priority must
be made in this application. In making such
claim, applicant may simply call attention to
the fact that a certified copy of the foreign
application is in the parent application.
(M.P.E.P. 201.14(b).)" [R-31]

# 201.14(c) Right of Priority, Practice [R-31]

Before going into the practice with respect
to those instances in which the priority papers
are used to overcome a reference, there will
first be described the practice when there is no
occasion to use the papers, which will be in the
majority of cases. In what follows in this
section it is assumed that no reference has
been cited which requires the priority date to
be overcome.

# No IRREGULARITIES

When the papers under 35 U.S.C. 119 are re-
ceived they are to be endorsed on the contents
page of the file as "Letter (or amendment) and
foreign application". Assuming that the pa-
pers are regular in form and that there are no
irregularities in dates, the examiner in the
next Office action will advise the applicant that
the papers have been received. The form of
acknowledgment may be as follows:

[1] "Receipt is acknowledged of papers sub-
mitted under 35 U.S.C. 119, which papers have
been placed of record in the file."

The examiner will enter the information
specified in § 202.03 on the face of the file
wrapper.

If application is in interference when papers
under 35 U.S.C. 119 are received see § 1111.10.

# PAPERS INCONSISTENT

If the certified copy filed does not corre-
spond to the application identified in the

<!-- PageFooter="Rev. 31, Jan, 1972" -->

<!-- PageBreak -->

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

# 201.14(c)

application oath or declaration, or if the appli-
cation oath or declaration does not refer to the
particular foreign application, the applicant has
not complied with the requirements of the rule
relating to the oath or declaration. In such
instances the examiner's letter, after acknowl-
edging receipt of the papers, should require the
applicant to explain the inconsistency and to file
a new oath or declaration stating correctly the
facts concerning foreign applications required
by rule 65. A letter in such cases may read :
[2] "Receipt is acknowledged of papers filed
,
based on an application filed
in
on
Applicant
has not complied with the requirements of
rule 65 (a), since the (oath or declaration)
does not acknowledge the filing of any foreign
application. A new (oath or declaration) is
required."

Other situations requiring some action by the
examiner are exemplified by the following sam-
ple letters.

# No CLAIM FOR PRIORITY

[8] "Receipt is acknowledged of a certified
copy, filed
of the

application referred to
in the (oath or declaration). If this copy is
being filed to obtain the benefits of the foreign
filing date under 35 U.S.C. 119, applicant
should also file a claim for priority as re-
quired by said section."

NOTE: Where the accompanying letter states
that the certified copy is filed for priority pur-
poses or for the convention date, it is accepted
as a claim for priority.

## FOREIGN APPLICATIONS ALL MORE THAN A YEAR BEFORE U.S. FILING

[4] "Receipt is acknowledged of the filing
on
of a certified copy of the

application referred to in the
(oath or declaration). A claim for priority
can not be based on said application, since the
United States application was filed more than
twelve months thereafter." The papers are
accordingly being returned."

## SOME FOREIGN APPLICATIONS MORE THAN A YEAR BEFORE U.S. FILING

For example, British provisional specifica-
tion filed more than a year before U.S. appli-
cation, but British complete filed within the
year, and certified copies of both submitted.

[5] "Receipt is acknowledged of papers filed
on September 18, 1953, purporting to comply
with the requirements of 35 U.S.C. 119. It is

not seen how the claim for priority can be
based on the British specification filed Janu-
ary 23, 1948, because the instant application
was filed more than one year thereafter.
However, the printed heading of the patent
will note the claimed priority date based on
the complete specification; i.e., November 1,
1948, for such subject matter as was not dis-
closed in the provisional specification."

### CERTIFIED COPY NOT THE FIRST FILED FOREIGN APPLICATION

[6] "Receipt is acknowledged of papers filed
on

(date)
, purporting to comply with
the requirements of 35 U.S.C. 119 and they
have been placed of record in the file.

Attention is directed to the fact that the
date for which priority is claimed is not the
date of the first filed foreign application
acknowledged in the oath or declaration.
However, the priority date claimed which will
appear in the printed heading of the patent
will be
»

(date claimed)

# NO CERTIFIED COPY

[7] "Acknowledgment is made of applicant's
claim for priority based on an application
filed in
on
It is
noted, however, that applicant has not filed a
certified copy of the
application
as required by 35 U.S.C. 119."

The above letters are merely typical ones
which have been used, and any unusual situa-
tion may be referred to the group director.

# APPLICATION IN ISSUE

The priority papers may be received while
the application is in issue. When the papers
are apparently regular in form and correspond
to the earliest foreign application recited in
the oath or declaration and this application is
not too old, the Issue Branch will enter the
papers, acknowledge their receipt, and make the
notation on the face of the file. If irregular
priority papers are received while the applica-
tion is in issue, the Issue Branch will take ap-
propriate action. If foreign application papers
are received after the Issue fee has been paid,
they will be left in the file wrapper and the ap-
plicant notified by the Issue Branch that the
papers were received too late to be admitted.

## RETURN OF PAPERS

It is sometimes necessary for the examiner
to return papers filed under 35 U.S.C. 119

<!-- PageFooter="Rev. 31, Jan. 1972" -->

<!-- PageBreak -->

<!-- PageHeader="TYPES, CROSS NOTING, AND STATUS OF APPLICATION" -->

201.14(c)

either upon request of the applicant or because
they fail to meet a basic requirement of the
statute, for example, all foreign applications
were filed more than a year prior to the U.S.
filing date.

Where the papers have not been given a paper
number and endorsed on the file wrapper, it is
not necessary to secure approval of the Commis-

sioner for their return but they should be sent
to the group director for cancellation of the Of-
fice stamps. Where the papers have been made
of record in the file (given a paper number and
endorsed on the file wrapper), a request for per-
mission to return the papers should be addressed
to the Commissioner of Patents and forwarded
to the group director for approval.

<!-- PageFooter="Rev. 31, Jan. 1972" -->

<!-- PageBreak -->

201.15

<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

### 201.15 Right of Priority, Overcoming a Reference [R-24]

The only time during ex parte prosecution
that the examiner considers the merits of an
applicant's claim of priority is when a refer-
ence is found with an effective date between
the date of the foreign filing and the date of
filing in the United States. If at the time of
making an action the examiner has found such
a reference, he simply rejects whatever claims
may be considered unpatentable thereover,
without paying any attention to the priority
date (assuming the papers have not yet been
filed). The applicant in his response may
argue the rejection if it is of such a nature
that it can be argued, or he may present the
foreign papers for the purpose of overcoming
the date of the reference. If the applicant
argues the reference, the examiner, in his next
action in the case, may, if he so desires, spe-
cifically require the foreign papers to be filed
in addition to repeating the rejection if it is
still considered applicable, or he may merely
continue the rejection. In those cases where
the applicant files the foreign papers for the
purpose of overcoming the effective date of a
reference a translation is required, if the for-
eign papers are not in the English language.
When the examiner requires the filing of the
papers, the translation should also be required
at the same time. This translation must be a
sworn translation or a translation certified as
accurate by a sworn or official translator.
When the necessary papers are filed to over-
come the date of the reference, the examiner's
action, if he determines that the applicant is
not entitled to the priority date, is to repeat
the rejection on the reference, stating the rea-
sons why the applicant is not considered en-
titled to the date. If it is determined that he
is entitled to the date, the rejection is with-
drawn in view of the priority date.

If the priority papers are already in the file
when the examiner finds a reference with the
intervening effective date, the examiner will
study the papers, if they are in the English
language, to determine if the applicant is en-
titled to their date. If the applicant is found
to be entitled to the date, the reference is
simply not used. If the applicant is found not
entitled to the date, the unpatentable claims
are rejected on the reference with an explana-
tion. If the papers are not in the English
language and there is no translation, the ex-
aminer may reject the unpatentable claims and
at the same time require an English translation
for the purpose of determining the applicant's
right to rely on the foreign filing date.

The foreign application may have been filed
by the assignee or legal representative or agent
of the inventor, in his or its own name as appli-
cant. In such cases, if the certified copy of the
foreign application corresponds with the one
identified in the oath or declaration as required
by rule 65 and no discrepancies appear, it may
be assumed that the inventors are the same. If
there is disagreement as to inventors on the
certified copy, the priority date should be re-
fused until the inconsistency or disagreement is
resolved.

The most important aspect of the examiner's
action pertaining to a right of priority is the
determination of the identity of invention be-
tween the U.S. and the foreign applications
The foreign application may be considered in
the same manner as if it had been filed in this
country on the same date that it was filed in
the foreign country, and the applicant is ordi-
narily entitled to any claims based on such
foreign application that he would be entitled
to under our laws and practice. The foreign
application must be examined for the question
of sufficiency of the disclosure under 35 U.S.C.
112, as well as to determine if there is a basis
for the claims sought.

In applications filed from Great Britain there
may be submitted a certified copy of the British
"provisional specification," which may also in
some cases be accompanied by a copy of the
"complete specification." The nature and func-
tion of the British provisional specification is
decribed in an article in the Journal of the
Patent Office Society of November 1936, pages
770-774. According to British law the provi-
sional specification need not contain a complete
disclosure of the invention in the sense of 35
U.S.C. 112, but need only describe the general
nature of the invention, and neither claims nor
drawings are required. Consequently, in con-
sidering such provisional specifications, the
question of completeness of disclosure is impor-
tant. If it is found that the British provisional
specification is insufficient for lack of disclosure,
reliance may then be had on the complete speci-
fication and its date, if one has been presented,
the complete specification then being treated as
a different application.

In some instances the specification and draw-
ing of the foreign application may have been
filed at a date subsequent to the filing of the
petition in the foreign country. Even though
the petition is called the application and the
filing date of this petition is the filing date of
the application in a particular country, the date
accorded here is the date on which the specifica-
tion and drawing were filed.

<!-- PageFooter="Rev. 31, Jan. 1972" -->

<!-- PageBreak -->

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

It may occasionally happen that the U.S.
application will be found entitled to the filing
date of the foreign application with respect to
some claims and not with respect to others.
Occasionally an applicant may rely on two or
more different foreign applications and may be
entitled to the filing date of one of them with
respect to certain claims and to another with
respect to other claims.

#### 201.16 Extension of Period of Prior- ity, Public Law 690 [R-24]

On August 8, 1946, Congress passed an act,
Public Law 690 (sometimes referred to as the
Boykin Act), providing for extensions of the
period to take care of delays during the war.
Public Law 220, July 23, 1947, Public Law 380,
August 6, 1947, and Public Law 619, Novem-
ber 16, 1954, supplement the original enactment.
These laws are reprinted in the back of the
Patent Laws pamphlet.

##### 201.17 Government Cases [R-24]

The term "Act of 1883 application" was
used in referring to applications of govern-
ment employees filed without fee under an act
dated March 3, 1883, which was amended
April 30, 1928. This act became 35 U.S.C. 266,
which was repealed October 25, 1965. Begin-
ning with this date, there are no longer any ap-
plications which are exempt from the filing fee
or issue fee. Such applications are not always
owned by the government. Other applications,
not inventions of government employees, may
be assigned to and owned by the government.
See § 607.01.

# 202 Cross-Noting 202.01 In Specification [R-31]

Rule 78. Cross-references to other applications. (a)
When an applicant files an application claiming an in-
vention disclosed in a prior filed copending application
of the same applicant, the second application must con-
tain or be amended to contain in the first sentence of
the specification following the title and abstract a refer-
ence to the prior application, identifying it by serial
number and filing date and indicating the relationship
of the applications, if the benefit of the filing date of
the prior application is to be claimed. Cross-references
to other related applications may be made when ap-
propriate. (See rule 14 (b).)

See also rule 79 and § 201.11.

There is seldom a reason for one application
to refer to the application of another applicant
not assigned to a common assignee. Such
reference ordinarily should not be permitted.

# 202.02 Notation on File Wrapper of a Divisional, Continuation, Con- tinuation-in-Part, or Substitute Application [R-31]

The heading of a printed patent includes all
identifying parent data of continuation-in-part,
continuation, divisional, substitute, and reissue
applications. Therefore, the identifying data
of all parent or prior applications, when given
in the specification must be inserted by the ex-
aminer in black ink on the file wrapper in the
case of a DIVISION, a CONTINUATION, a
CONTINUATION-IN-PART and, whether
given in the specification or not, in the case of
a SUBSTITUTE Application. The "None"
boxes must be marked when no parent or prior
application information is present on the file
wrappers containing such boxes. This should be
done no later than the first action.

The status of the parent or prior application
as "abandoned" is not written on the file
wrapper.

The inclusion of parent or prior application
information in the heading does not necessarily
indicate that the claims are entitled to the bene-
fit of the earlier filing date.

See § 306 for work done by the Assignment
Branch pertaining to these particular types of
applications.

In the unlikely situation that there has been
no reference to a parent application because
the benefit of its filing date is not desired,
no notation as to the parent case is made on
the face of the file wrapper.

# 202.03 On File Wrapper When Prior- ity Is Claimed for Foreign Ap- plication [R-31]

In accordance with § 201.14(c) the examiner
will fill in the spaces concerning foreign appli-
cations on the face of the older file wrappers.

The information to be written on the face of
the file wrapper consists of the country, appli-
cation date (filing date), and if available, the
application and patent numbers. In some in-
stances, the particular nature of the foreign ap-
plication such as "utility model" (Germany
(Gebrauchsmuster) and Japan) must be writ-
ten in parentheses before the application num-
ber. For example : Application Number (util-
ity model) B62854.

At the present time, the computer printed file
wrapper labels include the prior foreign appli-
cation information. However, the examiner must
still indicate whether the conditions of 35 U.S.C.
119 have been met.

<!-- PageFooter="Rev. 31, Jan. 1972" -->

<!-- PageBreak -->

<!-- PageHeader="203.08" -->
<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

If the filing dates of several foreign applica-
tions are claimed (see § 201.15, last paragraph)
and satisfactory papers have been received for
each, information respecting each of the foreign
applications is to be entered on the face of the
file wrapper. The data of the second foreign ap-
plication is written below the first.

The heading of the printed specification of
the patent when it is issued, and the listing in
the Official Gazette, will refer to the claim of
priority, giving the country, the filing date, and
the number of the application (and the patent
number in some instances) in those cases in
which the face of the file has been endorsed.

In the case of designs, only the country and
filing date are to be used.

# 202.04 In Oath or Declaration [R-22]

As will be noted by reference to § 201.14, rule
65 requires that the oath or declaration include
certain information concerning applications
filed in any foreign country. If no applications
for patent have been filed in any foreign coun-
try, the oath or declaration should so state.

# 202.05 In Case of Reissues [R-31]

Rule 179 requires that a notice be placed in
the file of an original patent for which an ap-
plication for reissue has been filed. See § 1401.03.

# 203 Status of Applications 203.01 New

A "new" application is one that has not yet
received an action by the examiner. An
amendment filed prior to the first Office Action
does not alter the status of a "new" applica-
tion.

# 203.02 Rejected [R-22]

An application which, during its prosecution
in the examining group and before allowance,
contains an unanswered examiner's action is
designated as a "rejected" application. Its
status as a "rejected" application continues
as such until acted upon by the applicant in
response to the examiner's action (within the
allotted response period), or until it becomes
abandoned.

# 203.03 Amended

An "amended" or "old" application is one
that, having been acted on by the examiner,
has in turn been acted on by the applicant in
response to the examiner's action. The appli-

cant's response may be confined to an election, a
traverse of the action taken by the examiner or
may include an amendment of the application.

# 203.04 Allowed or in Issue [R-22]

An "allowed" application or an application
"in issue" is one which, having been examined,
is passed for issue as a patent subject to pay-
ment of the issue fee. Its status as an "al-
lowed" case continues from the date of the
notice of allowance until it is withdrawn from
issue or until it issues as a patent or becomes
abandoned, as provided in rule 316. See § 712.

The files of allowed cases are kept in the
Issue and Gazette Branch, arranged numeri-
cally by serial number.

# 203.05 Abandoned [R-22]

An abandoned application is, inter alia, one
which is removed from the Office docket of
pending cases (1) through formal abandonment
by the applicant (acquiesced in by the assignee
if there is one) or by the attorney or agent of rec-
ord, (2) through failure of applicant to take ap-
propriate action at some stage in the prosecution
of the case, or (3) for failure to pay the issue
fee. (§§ 203.07, 711 to 711.05, 712)

# 203.06 Incomplete [R-23]

An application lacking some of the essential
parts and not accepted for filing is termed an
incomplete application. (§§ 506 and 506.01)

# 203.07 Abandonment for Failure to Pay Issue Fee [R-23]

An allowed application in which the Base
Issue Fee is not paid within three months after
the Notice of Allowance is abandoned for that
reason. The issue fee may however be accepted
by the Commissioner within a further period of
three months on a verified showing of sufficient
cause in which case the patent will issue as
though no abandonment had occurred.

# 203.08 Status Inquiries [R-31]

In an effort to sharply reduce the volume and
need for status inquiries, the past policy that
diligence must be established by making timely
status requests in connection with petitions to
revive has been discontinued.

When an application has been abandoned for
an excessive period before the filing of a petition
to revive, an appropriate terminal disclaimer
may be required. It should also be recognized
that a petition to revive must be accompanied by
the proposed response unless it has been previ-

<!-- PageFooter="Rev. 81, Jan. 1972" -->

<!-- PageBreak -->

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

ously filed (Rule 137). Also, under Rule 113,
"Response to a final rejection or action must in-
clude cancellation of, or appeal from the rejec-
tion of, each claim so rejected and, if any claim
stands allowed, compliance with any require-
ment or objection as to form."

# NEW APPLICATION

Current examining procedures now provide
for the routine mailing from the Examining
Groups of Form POL-327 in every case of
allowance of an application except where an
Examiner's Amendment is promptly mailed.
Thus, the separate mailing of a Form POL-327
or an Examiner's Amendment in addition to a
formal Notice of Allowance (POL-85) in all
allowed cases would seem to obviate the need for
status inquiries even as a precautionary measure
where the applicant may believe his new applica-
tion may have been passed to issue on the first
examination. However, as an exception, a status
inquiry would be appropriate where a Notice of
Allowance is not received within three months
from receipt of either a Form POL-827 or an
Examiner's Amendment.

Current examining procedures also aim to
minimize the spread in dates among the various
examiner dockets of each Art Unit and Group
with respect to actions on new applications. Ac-
cordingly, the dates of the "oldest new applica-
tions" appearing in the OFFICIAL GAZETTE are
fairly reliable guides as to the expected time
frames of when the Examiners reach the cases
for action.

Therefore, it should be rarely necessary to
query the status of a new application.

# AMENDED APPLICATIONS

Amended cases are expected to be taken up by
the examiner and an action completed within
two months of the amendment date. Accord-
ingly, a status inquiry is not in order after re-
sponse by the attorney until five or six months
have elapsed with no response from the Patent
Office. A post card receipt for responses to Office
actions, adequately and specifically identifying
the papers filed, will be considered prima facie
proof of receipt of such papers. Where such
proof indicates the timely filing of a response,
the submission of a copy of the post card with a
copy of the response will ordinarily obviate the
need for a petition to revive. Proof of receipt of
a timely response to a final action will obviate
the need for a petition to revive only if the re-
sponse was in compliance with Rule 113.

# IN GENERAL

Such status inquiries as may be still necessary
may be more expeditiously processed by the

Patent Office if each inquiry includes the ap-
plication Serial Number, filing date, name of the
applicant, name of the Examiner who prepared
the most recent Office action, and Group Art
Unit (taken from the most recent Office com-
munication) in addition to the last known status
of the application, and is accompanied by a
stamped return-addressed envelope.

Status replies will be made by the Patent
Office clerical support force and will only in-
dicate whether the application is awaiting action
by the Examiner or the applicant's response to
an Office action. In the latter instance the mail-
ing date of the Office action will also be given.

Inquiries as to the status of applications, by
persons entitled to the information, should be
answered promptly. Simple letters of inquiry
regarding the status of applications will be
transmitted from the Correspondence and Mail
Branch, to the examining groups for direct
action. Such letters will be stamped "Status
Letters."

If the correspondent is not entitled to the
information, in view of rule 14, he should be
so informed.

For Congressional and other official inquiries
see § 203.08 (a).

The original letter of inquiry should be re-
turned to the correspondent together with the
reply. The reply to an inquiry which includes
a self-addressed, postage-paid postcard should
be made on the postcard without placing it in an
envelope.

In cases of allowed applications, a memoran-
dum should be pinned to the inquiry with a
statement of date it was forwarded to the Issue
and Gazette Branch by way of the Security
Group, and transmitted to the Issue Branch for
its appropriate action. This Branch will notify
the inquirer of the date of the notice of allow-
ance and the status of the application with
respect to payment of the issue fee and abandon-
ment for failure to pay the issue fee.

In those instances where the letter of inquiry
goes beyond mere matters of inquiry, it should
not be marked as a "status letter", or returned
to the correspondent. Such letters must be
entered in the application file as a permanent
part of the record. The inquiry should be an-
swered by the examiner, however, and in a
manner consistent with the provisions of
rule 14.

Another type of inquiry is to be distinguished
from ordinary status letters. When a U.S. ap-
plication is referred to in a foreign patent (for
priority purposes, for example), inquiries as to
the status of said application (abandoned,
pending, patented) should be forwarded to the
Application Branch.

<!-- PageFooter="Rev. 31, Jan. 1972" -->

<!-- PageBreak -->

<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATIONS" -->
<!-- PageHeader="203.08 (a)" -->

Telephone inquiries regarding the status of
applications, by persons entitled to the informa-
tion, should be directed to the group clerical
personnel and not to the examiners. Inasmuch
as the official records and applications are lo-
cated in the clerical section of the examining
groups, the clerical personnel can readily pro-
vide status information without contacting the
examiners.

# 203.08(a) Congressional and Other Official Inquiries [R-3]]

Correspondence and inquiries from the White
House, Members of Congress, embassies, and
heads of Executive departments and agencies
normally are cleared through the Commission-
er's Office.

When persons from the designated official
sources request services from the Patent Office,
or information regarding the business of the
Patent Office, they should, under long-standing
instructions, be referred, at least initially, to the
Commissioner's Office.

This procedure is used so that there will be
uniformity in the handling of contacts from the
indicated sources, and also so that compliance
with directives of the Department of Commerce
is attained.

Inquiries referred to in this section, particu-
larly correspondence from Congress or the
White House, should immediately be trans-
mitted to the Commissioner's Office by special
messenger, and the Commissioner's Office should
be notified by phone that such correspondence
has been received.

<!-- PageFooter="Rev. 31, Jan. 1972" -->