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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

201.06 (a) Division-Continuation Program

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

201.13(a) Right of Priority based upon an Applica-
tion for an Inventor's Certificate

201.14
Right of Priority, Formal Requirements

201.14(a) Time for Filing Papers

201.14 (b) Papers Required

201.14(c) Practice

201.14(d) Proper Identification of Priority Applica-
tion

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

203.08(a) Congressional and Other Official Inquiries

## 01 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-38]

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."

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 filling 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 Division for a revision of its records.

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-39]

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.

## RULE 45

Since rule 45(b) permits the conversion of a
joint application to a sole, it follows that a new
application, restricted to divisible subject mat-
ter, filed during the pendency of the joint ap-

plication 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 division if filed by the sole appli-
cant 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.

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

The rule 147 divisional practice has been
superseded by the rule 60 practice which became
effective on September 1, 1971. See § 201.06(a).

## 201.06(a) Division-Continuation Program [R-39]

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 35 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.

The former rule 147 division practice and
streamline continuation practice have been su-
perseded by the change in the Rules of Practice
establishing rule 60, which became effective on
September 1, 1971.

## RULE 60 PRACTICE

The rule 60 practice was developed to provide
a procedure for filing a continuation or divi-
sional application where hardships existed in
obtaining the signature of the inventor on such
an application during the pendency of the prior
application. It is suggested that the use of the
rule 60 practice be limited to such instances in
view of the additional work required by the
Office to make copies and enter preliminary
amendments.

Rule 60 practice permits persons having au-
thority to prosecute a prior copending applica-
tion to file a continuation or divisional applica-
tion without requiring the inventor to again
execute an oath or declaration under 35 U.S.C.
115. if the continuation or divisional applica-
tion is an exact copy of the prior application as
executed and filed. Where the immediate prior
application was not signed (for example, where
it was filed under the former rule 147 or current
rule 60 practice), a copy of the most recent ap-
plication having a signed oath or declaration in
the chain of copending prior applications under
35 U.S.C. 120 must be used.

The basic concept of rule 60 practice is that
since the inventor has already made the affirma-
tion required by 35 U.S.C. 115, it is not neces-
sary to make another affirmation in a later
application that discloses and claims only the
same subject matter. It is for this reason that a
rule 60 application must be an exact duplicate
of an earlier application executed by the inven-
tor. It is permissible to retype pages to provide
clean copies.

## RULE 60 APPLICATION CONTENT

As mentioned previously, a rule 60 applica-
tion must consist of a copy of an executed appli-
cation as filed (specification, claims, drawings
and oath or declaration). The use of transmittal
form 54 is urged since it acts as a checklist for
both applicant and the Office.

Although a copy of all original claims in the
prior application must appear in the rule 60
application, some of the claims may be canceled
by request in the rule 60 application in order to
reduce the filing fee (see form 54, item 6). Any
preliminary amendment presenting additional
claims (claims not in the prior application as
filed) should accompany the request for filing
an application under rule 60, but such an
amendment will not be entered until after the
filing date has been granted. Any claims added
by amendment should be numbered consecu-
tively beginning with the number next follow-
ing the highest numbered original claim in the
prior executed application. Amendments made

201.06(a)

in the prior application do not carry over
into the rule 60 application. Any preliminary
amendment should accompany the rule 60 appli-
cation and be directed to "the accompanying
rule 60 application" and not to the prior
application.

All application copies must comply with rule
52 and must be on paper which permits entry of
amendments thereon in ink.

Copies of the application should be prepared
and submitted by the applicant, his attorney or
agent, and be verified to be true copies by him.
The copy of the oath or declaration need not
show a copy of the inventor's or notary's signa-
ture provided that all other data is shown and
an indication is made that the oath or declara-
tion has been signed.

The Patent Office will prepare copies of the
prior application without charge if the appli-
cant is unable to supply them.

Claims for priority rights under 35 U.S.C.
119 must be made in rule 60 applications if they
are desired. Reference should be made to cer-
tified copies filed in a prior application if
reliance thereon is made.

If the claims presented by amendment in a
rule 60 application are directed to matter shown
and described in the prior application but not
substantially embraced in the statement of in-
vention or claims originally presented, the ap-
plicant should file a supplemental oath or
declaration under rule 67 as promptly as
possible.

In view of the fact that rule 60 applications
are limited to continuations and divisions, no
new matter may be introduced in a rule 60 ap-
plication, 35 U.S.C. 132.

A statement to the effect that the verifier
believes the submitted copy to be a true copy of
the prior application as filed to the best of his
information and belief is a sufficient verifica-
tion, if an explanation is made as to why the
statement must be based only on belief.

If the inventorship shown on the original
oath or declaration has been changed and ap-
proved during the prosecution of the prior ap-
plication, the rule 60 application papers must
indicate such a change has been made and ap-
proved in order that the changed inventorship
may be indicated in the rule 60 application. The
rule 60 application papers should also include
any additions or changes in an inventor's citi-
zenship, residence or post office address made
and approved in the prior application.

## FORMAL DRAWINGS REQUIRED

Formal bristolboard drawings are required in
rule 60 applications as in other applications.
Transfer of drawings from abandoned applica-

tions is permitted. If informal drawings are
filed with the application papers, a ten dollar
comparison fee will be charged at the time when
new formal drawings are filed.

Any drawing corrections requested but not
made in the prior application should be repeated
in the rule 60 application if such changes are
still desired. If the drawings were changed dur-
ing the prosecution of the prior application,
such drawings may be transferred, however, a
copy of the drawings as originally filed must be
included in the rule 60 application papers to
indicate the original content.

Affidavits and declarations, such as those
under rules 131 and 132 filed during the prosecu-
tion of the prior application do not automatic-
ally become a part of the rule 60 application.
Where it is desired to rely on an earlier filed
affidavit, the applicant should make his remarks
of record in the rule 60 application and include
a copy of the original affidavit filed in the prior
application.

ABANDONMENT OF THE PRIOR APPLICATION

Under rule 60 practice the prior application
is not automatically abandoned upon filing of
the rule 60 application. If the prior application
is to be expressly abandoned, such a paper must
be signed by the applicant himself, the assignee
of record or the attorney or agent of record,
rule 138. A registered attorney or agent not of
record acting in a representative capacity under
rule 34 (a) may not expressly abandon an appli-
cation.

If the prior application which is to be ex-
pressly abandoned has a notice of allowance
issued therein, the prior application can become
abandoned by the nonpayment of the base issue
fee. However, once a base issue fee has been paid
in the prior application, even if the payment
occurs following the filing of a continuation
application under rule 60, a petition to with-
draw the prior application from issue must be
filed before the prior application can be aban-
doned (rule 313). The checking of box 8 on form
54 is not sufficient to expressly abandon an ap-
plication having a notice of allowance issued
therein and the base issue fee submitted (see
§ 608.02(i)).

If the prior application which is to be ex-
pressly abandoned is before the Board of Ap-
peals or the Board of Interferences, a separate
notice should be forwarded by the applicant to
such Board, giving notice thereof.

After a decision by the CCPA in which the
rejection of all claims is affirmed, proceedings
are terminated on the date of receipt of the

# TYPES, CROSS-NOTING, AND STATUS OF APPLICATION

201.06(a)

Court's certified copy of the decision by the
Patent Office, Continental Can Company, Inc.,
et al. v. Schuyler, 168 USPQ 625 (D.C.D.C.
1970). See § 1216.01.

## EXAMINATION

The practice relating to making first action
rejections final applies also to rule 60 applica-
tions, see § 706.07(b).

Where the rule 60 application has reached the
examining group without a copy of the oath or
declaration from the prior application, a copy
should be ordered from a copy center at the time
the prior application is reviewed during exam-
ination of the rule 60 application.

Any preliminary amendment filed with a rule
60 application which is to be entered after
granting of the filing date should be entered by
the clerical personnel of the examining group
where the application is finally assigned to be
examined. Accordingly, these applications
should be classified and assigned to the proper
examining group by taking into consideration
the claims that will be before the examiner upon
entry of such a preliminary amendment.

If the examiner finds that a filing date has
been granted erroneously because the applica-
tion was incomplete, the application should be
returned to the Application Division via the
Office of the Assistant Commissioner for
Patents.

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

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

IN THE UNITED STATES PATENT OFFICE

Docket No.
(country)

Anticipated Classification

of this application :

Class ____ Subclass

Prior application :
Examiner
10.
☐
The power of attorney in the prior applica-
tion is to
Art Unit.
(name, registration number, and address)

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

SIR: This is a request for filing a
☐
c.
☐
Address all future communications to
continuation
☐
divisional application under 37 CFR 1.60. of pending
prior application serial no.
filed on
(May only

(date)
of
(inventor currently of record in prior application)

for
(title of invention)

1\.
☐
Enclosed is a copy of the prior application,
including the oath or declaration as origin-
ally filed and an affidavit or declaration
verifying it as a true copy. (See 8 and 8a
for drawing requirements.)

2\.
☐
Prepare a copy of the prior application.

3\.
☐
The filing fee is calculated below :

CLAIMS AS FILED IN THE PRIOR APPLICATION, LESS ANY CLAIMS CAN -
CELLED BY AMENDMENT BELOW

For

Number filed

Number extra

Rate

Basic fee $65

Total claims.

-10=

$2=

Independent claims. Total filing fee.

- 1=

10=

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 in this application original claims

of the prior
application before calculating the filing fee.

(At least one original independent claims
must be retained for filing purposes.)

7\.
☐
Amend the specification by inserting before
the first line the sentence : - This is a
☐
continuation,
☐
division, of application
serial no.
filed

8\.
☐
Transfer the drawings from the prior appli-
cation to this application and abandon said
prior application as of the filing date
accorded this application. A duplicate copy
copy of this sheet is enclosed for filing in
the prior application file. (May only be
used if signed by person authorized by rule
138 and before payment of base issue fee.)

8a.
☐
New formal drawings are enclosed.

8b.
☐
Priority of application serial no.
filed
on
in

is claimed under 35 U.S.C. 119.
☐
The certified copy has been filed in prior ap-
plication serial no.
filed

9\.
☐
The prior application is assigned of record to

a.
☐
The power appears in the original
papers in 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.

be completed by applicant, or attor-
ney or agent of record.)

11\.
☐
A preliminary amendment is enclosed. (Claims
added by this amendment have been prop-

erly numbered consecutively beginning
with the number next following the high-
est numbered original claim in the prior
application. )

12\.
☐
I hereby verify that the attached papers are a
true copy of prior application serial
no. ______ as originally filed on
(date)

The undersigned declare further that all statements
made herein of his own knowledge are true and that
all statements made on information and belief are
believed to be true; and further that these statements
were made with the knowledge that willful false state-
ments and the like so made are punishable by fine or
imprisonment, or both, under section 1001 of Title 18 of
the United States Code and that such willful false
statements may jeopardize the validity of the applica-
tion or any patent issuing thereon.

(signature)

(date)
Address of signator :
☐
record
Inventor(s)
☐
Assignee of complete
interest
☐
Attorney or agent of
☐
Filed under rule 34 (a )

# 201.07 Continuation [R-39]

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 application,
i.e., the continuation should not include any-
thing 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). Sec § 201.06 (a).

# 201.08 Continuation-in-Part [R-33]

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.

For notation to be put on the file wrapper by
the examiner in the case of a continuation-in-
part application see § 202.02. See § 708 for order
of examination.

## 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 Refile [R-33]

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

If the applicant designates his application as
"refile" 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 "refile," 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 Division of any assignment of
the parent case that may have been made.

## 201.11 Continuity Between Applica- tions: When Entitled to Filing Date [R-39]

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 filing 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\. See In re Ahlbrecht, 168 USPQ 293 (CCPA
1971).

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; 130 USPQ
404, 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 date, or before the date the
patent issues on the first application. Thus,
the second application 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
when a patent has been issued, and hence this
expression is the broadest of the three.

After a decision by the Court of Customs and
Patent Appeals in which the rejection of all
claims is affirmed, proceedings are terminated
on the date of receipt of the Court's certified
copy of the decision by the Patent Office. Con-
tinental Can Company, Inc. et al. v. Schuyler,
168 USPQ 625 (D.C.D.C. 1970). There are ser-
eral other situations in which proceedings 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, preferably as a separate paragraph.
Status of the parent applications (whether it
is patented or abandoned) should also be
included. If a parent application has become
a patent, the expression ", Patent No .- "
should follow the filing date of the parent ap-

plication. If a parent application has become
abandoned, the expression ", abandaned" should
follow the filing date of the parent appli-
cation. 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."

In rule 60 cases, applicant, in his amendment
canceling the nonelected claims, should include
directions to enter "This is a division (continua-
tion) of application Serial No.
filed

" as the first sentence following the
abstract. Where the applicant has inadvertently
failed to do this and the rule 60 case is otherwise
ready for allowance, 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.

Where the applicant has inadvertently failed
to make a reference to the parent case in an
application filed under 37 CFR 1.60 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.

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-46]

# 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-46]

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.

35 U.S.O. 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 and Trademark 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 certification 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.

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.

Applications for inventors' certificates filed in a for-
eign country in which applicants have a right to apply,
at their discretion, either for a patent or for an inven-
tor's certificate shall be treated in this country in the
same manner and have the same effect for purpose of
the right of priority under this section as applications
for patents, subject to the same conditions and require-
ments of this section as apply to applications for pat-
ents, provided such applicants are entitled to the bene-
fits of the Stockholm Revision of the Paris Convention
at the time of such filing. (effective August 25, 1973)
Public Law 92-358, July 28, 1972.

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, or its earliest parent
United States application under 35 U.S.C. 120,
must have been filed within twelve months from
the date of the earliest foreign filing in a "rec-
ognized" country as explained below.

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

5\. In the case where the basis of the claim is
an application for an inventor's certificate, the
requirements of rule 55 (c) must also be met.

## 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 is administered by the
World Intellectual Property Organization
(WIPO) at Geneva. Switzerland. This treaty
has been revised several times, the latest revision
in effect being written in Stockholm in July,

1967 (copy at 852 O.G. 511). Articles 13-30 of
the Stockholm Revision became effective on Sep-
tember 5, 1970. Articles 1-12 of the Stockholm
Revision became effective on August 25, 1973.
One of the many provisions of the treaty re-
quires each of the adhering countries to accord
the right of priority to the nationals of the other
countries and the first United States statute re-
lating 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. A foreign country may also provide
for this right by reciprocal 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), Chad, Republic of (I), Congo,
(I). Costa Rica (P), Cuba (I. P), Cyprus (I).
Czechoslovakia (I). Dahomey (I). Denmark
(I). Dominican Republic (I. P). Ecuador (P),
Egypt (I). Finland (I), France (I). Gabon
(I). German Democratic Republic (I) effective
December 4. 1975. Germany, Federal Republic
of (I), Greece (I). Guatemala (P), Haiti (I,
P). Holy See (I). Honduras (P), Hungary (I),
Iceland (I), Indonesia (I), Iran (I), Ireland
(I), Israel (T), Italy (I), Ivory Coast, Republic
of (I), Japan (I), Jordan (I), Kenya (I),
Korea (L), Lebanon (I), Liechtenstein (I),
Luxembourg (I), Malagasy, Republic of (I),
Malawi (I), Malta (I), Mauritania (I), Mexico
(I), Monaco (I), Morocco (I), Netherlands (I),
New Zealand (I), Nicaragua (P), Niger (I),
Nigeria, Federation of (I), Norway (I), Pan-
ama (P), Paraguay (P), Philippines (I),
Poland (I), Portugal (I), Romania (I). San
Marino (I). Senegal, Republic of (I), South
Africa. Republic of (I), Southern Rhodesia
(I). Spain (I). Sri Lanka (formerly Ceylon)
(I). Sweden (T). Switzerland (I), Syrian Arab
Republic (I). Togo (I) Trinidad and Tobago
(I). Tunisia (I), Turkey (I). Uganda (I).
U.S.S.R. (I). United Kingdom (I). United Re-
public of Tanzania (I), Upper Volta, Republic

201.13

of (I), Uruguay (I, P), Viet-Nam, Republic of
(I), Yugoslavia (I), Zaire (I), Zambia (I).

Thirteen African Countries have joined to-
gether to create a common patent office and to
promulgate a common law for the protection
of inventions, trademarks, and designs. The
common patent office is called "Office Africain
et Malgache de la Propriete Industrielle"
(OAMPI) and is located in Yaounde, Came-
roon. The member countries using the OAMPI
Patent Office are Cameroon; Central African
Republic; Congo, Republic of; Chad, Republic
of; Dahomey; Gabon; Ivory Coast, Republic
of; Malagasy, Republic of; Mauritania ; Niger;
Senegal, Republic of; Togo; and Upper Volta,
Republic of. Since all these countries adhere to
the International Convention for the Protection
of Industrial Property, priority under 35 U.S.C.
119 may be claimed of an application filed in
the OAMPI Patent Office.

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
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

4
The United States application. or its earliest
parent application under 35 U.S.C. 120. must
have been filed within twelve months of the for-
cign filing. In computing this twelve months.
the first day is not counted : thus. if an applica-
tion was filed in Canada on January 2, 1975, the

U.S. application may be filed on January 2,
1976. The Convention specifies in Article 4C (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 Office has not received applications on
Saturdays and, in view of 35 U.S.C. 21, and the
Convention which provides "if the last day of
the period is an official holiday, or a day on
which the Office is not open for the filing of ap-
plications in the country where protection is
claimed. the period shall be extended until the
first following 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 except as provided in the second to
the last paragraph of 35 U.S.C. 119. If an in-
ventor has filed an application in France on
January 2, 1952, and an application in the
United Kingdom on March 3. 1952, and then
files in the United States on February 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 appli-
cation was filed more than twelve months before
the U.S. application, and he would not be en-
titled to the benefit of the date of the United
Kingdom application since this application is
not the first one filed. If the first foreign appli-
cation was filed in a country which is not recog-
nized with respect to the right of priority, it is
disregarded for this purpose.

Public Law 87-333 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.

The United Kingdom and a few other coun-
tries 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 application does not affect the status of
the application 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. See
In re Clamp, 151 USPQ 423.

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 1974, a foreign application filed
in January 1975, and a U.S. application filed
in December 1975, 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 Gebrauchsmuster in Ger-
many.

# 201.13(a) Right of Priority based upon an Application for an Inventor's Certificate [R-46]

Until August 25, 1973, the Patent and Trade-
mark Office did not recognize a right of priority
based upon an application for an Inventors'
Certificate such as used in the U.S.S.R. How-
ever, a claim for priority and a certificated copy
of an application for Inventors' Certificate were
entered in the file of the U.S. application and
were retained therein. This allowed the appli-
cant to urge the right of priority in possible
later court action.

On August 25, 1973, Articles 1-12 of the Paris
Convention of March 20, 1883, for the Pro-
tection of Industrial Property, as revised at
Stockholm, July 14, 1967, came into force with
respect to the United States and apply to appli-
cations filed thereafter in the United States. A
fourth paragraph to 35 U.S.C. 119 (enacted by
Public Law 92-358, July 28, 1972) (copy at
§ 201.13) and a new paragraph (c) to rule 55
(905 O.G. 684) also became effective on Au-
gust 25, 1973.

Rule 55. Serial number and filing date of application.

\+
\*
\*
\+
\*

(c) An applicant may under certain circumstances
claim priority on the basis of an application for an
inventor's certificate in a country granting both inven-
tor's certificates and patents. When an applicant wishes
to claim the right of priority as to a claim or claims of
the application on the basis of an application for an
inventor's certificate in such a country under 35 U.S.C.
119, last paragraph (as amended July 28, 1972), the
applicant or his attorney or agent, when submitting a
claim for such right as specified in paragraph (b) of
this rule, shall include an affidavit or declaration in-
cluding a specific statement that, upon an investiga-
tion, he has satisfied himself that to the best of his
knowledge the applicant, when filing his application
for the inventor's certificate, had the option to file an
application either for a patent or an inventor's certifi-
cate as to the subject matter of the identified claim
or claims forming the basis for the claim of priority.

An inventor's certificate may form the basis
for rights of priority under 35 U.S.C. 119 only
in countries maintaining patents and inventor's
certificates as alternative systems for the recog-
nition and reward of inventive contributions
where an applicant has the right to apply at his
discretion for either grant. Some countries such
as Bulgaria, Rumania, and the Soviet Union
provide alternatively for either patents or in-
ventor's certificates on some types of inventions
for some inventors.

Priority rights on the basis of an inventor's
certificate application will be honored only if
the applicant had the option or discretion to file
for either an inventor's certificate or a patent on
his invention in his home country. Certain coun-
tries which grant both patents and inventor's
certificates issue only inventor's certificates on
certain subject matter, generally pharmaceuti-
cals, foodstuffs and cosmetics.

To insure compliance with the treaty and
statute, rule 55(c) provides that at the time of
claiming the benefit of priority for an inventor's
certificate, the applicant or his attorney must
submit an affidavit or declaration stating that
the applicant when filing his application for the
inventor's certificate had the option either to
file for a patent or an inventor's certificate as to
the subject matter forming the basis for the
claim of priority.

## Effective Date

Rule 55(c) went into effect on August 25,
1973, which is the date on which the interna-
tional treaty entered into force with respect to
the United States. The rights of priority based
on an carlier filed inventor's certificate shall be
granted only with respect to U.S. patent appli-
cations where both the earlier application and
the U.S. patent application were filed in their

respective countries following this effective
date.

### 201.14 Right of Priority, Formal Re- quirements [R-46]

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 or inventors' certificate on the same in-
vention has been filed in any foreign country
either by the applicant or by his legal repre-
sentatives or assigns; if any foreign application
has been filed the applicant must state the coun-
try and the date of filing of the earliest such
application and he must also identify every for-
eign application which was filed more than
twelve months before the filing of the applica-
tion in this country. If all foreign applications
have been filed within twelve months of the
U.S. filing the applicant is required to recite
only the first such application and it should
be clear in the recitation that the foreign ap-
plication 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-39]

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
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.

## 201.14(b)

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

Priority papers filed after the date of pay-
ment of the base issue fee will be accepted and
acknowledged only if a petition under rule 183
to suspend rule 55 is filed and granted. Such
petitions are granted only in extraordinary
situations, when justice requires and where the
printing of the patent has not yet taken place.
Ex parte Bueche-Roose, 100 USPQ 439; In re
Inoue, 171 USPQ 634.

## 201.14(b) Rights of Priority, Papers Required [R-46]

The filing of the priority papers under 35
U.S.C. 119 makes the record of the file of the
United States patent complete. The Patent and
Trademark Office does not examine the papers
to determine whether the applicant is in fact
entitled to the right of priority and does not
grant or refuse the right of priority, except as
described in § 201.15 and in cases of interfer-
ences.

201.14(b)

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
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 Pieces 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.

LATER FILED APPLICATIONS, REISSUES

Where the benefit of a foreign filing date
based on a foreign application is claimed in a
later filed application (i.e., continuation, con-
tinuation-in-part, division) or in a reissue appli-
cation and a certified copy of the foreign appli-
cation as filed, has been filed in a parent or
related application, it is not necessary to file an
additional certified copy in the later application.
The applicant when making such claim for
priority may simply identify the application
containing the certified copy. In such cases, the
examiner should acknowledge the claim with a
statement as follows :

[1] "Applicant's claim for priority, based on
priority papers filed in 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 or
related application and the examiner is aware of
the fact that a claim for priority under 35
U.S.C. 119 was made in the parent or related
application, the examiner should call applicant's
attention to these facts in an Office action, so
that if a patent issues on the later or reissue
application, the priority data will appear in the
patent. In such cases, the following exemplary
language should be used :

[2] "Applicant is reminded that in order for a
patent issuing on the instant application, to
contain the priority data based on priority
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 elaim, applicant may simply
identify the application containing the prior-
ity papers.

Where the benefit of a foreign filing date,
based on a foreign application, is claimed in a
later filed application or in a reissue application
and a certified copy of the foreign application,
as filed, has not been filed in a parent or related
application, a claim for priority may be made in
the later application. When such a claim is made
in the later application and a certified copy of
the foreign application is placed therein, the
examiner should acknowledge the claim with a
statement as follows :

[3] "Applicant's claim for priority under
35 U.S.C. 119 and priority papers filed in sup-
port thereof are hereby acknowledged."

## 201.14(c) 201.14(c) Right of Priority, Practice [R-39]

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
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 (ooth 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

[3] "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
, purporting to comply with
the requirements of 35 U.S.C. 119 and they
(date)
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

₾

When priority papers for applications which
have been sent to the Patent Issue Division
are received, the priority papers should be sent
to the Patent Issue Division. The Patent Issue
Division will acknowledge receipt of all such
priority papers.

# RETURN OF PAPERS

It is sometimes necessary for the examiner
to return papers filed under 35 U.S.C. 119
either upon request of the applicant, for ex-
ample, to obtain a sworn translation of the certi-
fied copy of the foreign application, or because
they fail to meet a basic requirement of the
statute, such as where 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 Trade-
marks and forwarded to the group director for
approval. Where the return is approved, the
written approval should be placed in the file
wrapper. Any questions relating to the return
of papers filed under 35 U.S.C. 119 should be
directed to the Office of the Deputy Assistant
Commissioner for Patents. [R-43]

# 201.14(d) Proper Identification of Priority Application [R- 43]

In order to help overcome problems in deter-
mining the proper identification of priority ap-
plications for patent documentation and print-
ing purposes, the following tables have been

prepared which set out for 43 countries the
forms of acceptable presentation of application
numbers.

The tables should enable applicants, ex-
aminers and others to extract from the various
formats the minimum required data which
comprises a proper citation.

Proper identification of priority applications
is essential to establishing accurate and com-
plete relationships among various patent docu-
ments which reflect the same invention. Knowl-
edge of these relationships is essential to search
file management, technology documentation and
various other purposes.

The tables show the forms of presentation of
application numbers as used in the records of
the source or orginating patent office. They also
show, under the heading "Minimum Significant
Part of the Number", the simplified form of
presentation which should be used in United
States Patent and Trademark Office records.

€

Note particularly that in the simplified for-
mat that :

(1) Alpha symbols preceding numerals are
eliminated in all cases except Hungary.

(2) A decimal character and numerical sub-
set as part of a number is eliminated in all cases
except France.

(3) Use of the dash (-) is reduced, but is
still an essential element of application num-
bers, in the case of Czechoslovakia, Japan, and
Venezuela.

## MINIMUM SIGNIFICANT PART OF AN APPLICATION NUMBER PROVIDING UNIQUE IDENTIFICATION OF AN APPLICATION

TABLE I-Countries Using Annual Application Number Series

Country #

Example of application number at source

Minimum significant part of the number

Remarks

Austria [OE]_

A 12116/69

12116/69

The letter A is common to all patent applications.

Czechoslo-

PV3628-72

3628-72

PV is an abbreviation mean-

vakia [CS].

ing "application of in- vention".

Denmark

[DK]

2986/68

Egypt [ET] __

487 1968

Finland [8F].

3032/69

France [FR] __

69.38066

69. 38066

Germany,

P 1940738.6-

1940738

P=Patent. The first two

Fed. Rep.

digits of the number repre-

of [DT].

sent the last two digits of the year of Application less

50 (e.g., 1969 less 50=19; 1979 less 50 == 23). The first digit after the period is an

error control digit. The two digits following the dash

indicate the examining division.

See footnotes at end of table.

# MANUAL OF PATENT EXAMINING PROCEDURE

TABLE I. - Countries Using Annual Application Number Series" Continued

Country #

Example of application number at source

Minimum significant part of the number

Remarks

G 6947580.5

*6947580

G == Gebrauchsmuster. The

first two digits represent the last two digits of the

year of the application. The difference in numbering

scheme of the first two digits affords unique iden-

tification of this type of

application. However, see note below (*). The digit

after the period is for error control.

India [IN] ____

643/58

Ireland [Et] __

1152/69

Italy [IT] ____

28039-A/70

28639/70

Application numbers are not

presented on published patent documents or given

in an official gazette. An

exclusive block of applica-

tion numbers is given

annually to each of 93 provincial bureaus where

patent applications may be

filed. In 1973, 90,000 num-

bers were allotted, whereas

an estimated total of

30,000 applications are ex- pected to be filed. While,

as a consequence, gaps will exist in the ultimately used numbers, each application has a unique number. For

this purpose, neither the dash nor the letter identi- fying the receiving bureau, which follow the applica- tion number, is needed.

Japan [JA]

46-69807

The two digits before the

46-81864

*46-81864

dash indicate the year of the Emperor's reign in which the application was filed (46=1971). Pat- ent and utility model applications are numbered in separate series. The examples given were filed on the same day.

Netherlands

7015038

First two digits indicate year

[NL]. Norway

1748/70

of application.

[NO]. Pakistan

1031/65

[PK]. South Africa

70/4865

[ZA] Sweden [SW]_

16414/70

The new numbering system

(old

was introduced January 1,

system). 7300001-0 (new system).

7300001

1973. First two digits indicate year of application. The digit after the dash is used for computer control.

Switzerland

15978/70

[CH].

United King-

41352/70

dom [GB].

Venezuela

2122-68

[VE]. Yugoslavia

P1135/66.

1135/66

[Y U]. Zambia [ZB] ._

142/70.

142/70

#ICIREPAT Country Code is indicated in brackets; e.g., Austria
[OE].

*In order to distinguish utility model applications from patent applica-
tions, it is necessary to identify them as to type of application in citations
or references. This may be done either by using the name of the applica-
tion type In conjunction with the number or by using the symbol "U"
in brackets or other enclosure following the number.

TABLE II .- Countries Using Other Than An Annual Application Number Series

Country #

Example of application number at source

Minimum significant part of the number

Remarks

Argentina

231790

[AR]. Australia

59195/69

Long series spread over

[AU].

several years. New series started in 1970.

Belgium

96489

96469

Application numbers are not

[BE].

presented on published

patent documents or given in an official gazette. A series of parallel numbers is

provided to each of 10

offices which, respectively, may receive applications

(control office +9 provin-

cial bureaus) and assign application numbers. Pres- ent series was started in 1958. Since an application number does not uniquely identify a BE document, the patent number is often

cited as the "priority application number".

Brazil [BR] __

222986

Bulgaria

11572

[BG].

Canada [CA]_

103828

Colombia

128050

126050

[CO].

Cuba [CU]

33384

German

AP84C/

137355

AP=Ausschliessungspatent;

(Dem. Rep.)

137355.

[DL].

WP35b/

147203

WP=Wirtschaftspatent. The

147203

other symbols before the

slash are classification sym- bols. A single numbering both AP and

Greece [GR] ..

44114

series covers WP applications.

Hungary

OE 107

The letters preceding the

[HU].

number are essential for identifying the application.

They are the first letter and the first following vowel of the applicant's name. There is a separate num- bering series for each pair of letters.

Israel [IL] ....

35691

Luxembourg

60093

[LU].

Mexico [MX] __

123723

Monaco [MC].

908

New Zealand

161732

[NZ]. OAMPI ......

52118

Philippines

11929

[RP].

Poland [PO] __

P144826

144826

44987

*44987

Portugal

52555

[PT].

5607

*5607

Romania

65211

[RU].

Soviet Union

1397205.30-

1397205

The numbers following the

[SU].

slash denote the examina- tion division and a pro- cessing number.

United

889877

The highest number as-

States [US].

signed in the series of numbers started in Jan- uary 1960. New series started January 1970.

#ICIREPAT Country Code is indicated in brackets; e.g. [AR].
*In order to distinguish utility model applications from patent appli-
cations, it is necessary to identify them as to type of application in
citations or references. This may be done either by using the name of
the application type in conjuction with the number or by using the sym-
bol "U" in brackets or other enclosure following the number.

201.15

## 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
described 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.

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 filles 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).)

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