Go to MPEP - Table of Contents
Notice regarding Section 508 of the Workforce Investment Act of 1998. Section 508 of the Workforce Investment Act of 1998 requires all United States Federal Agencies with websites to make them accessible to individuals with disabilities. At this time, the MPEP [HTML] files below do not meet all standards for web accessibility. Until changes can be made to make them fully accessible to individuals with disabilities, the USPTO is providing access assistance via telephone. MPEP Interim Accessibility Contact: 703-305-8813.
[Note: 37 CFR 1.60 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. A continuation or divisional application filed under 37 CFR 1.60 on or after December 1, 1997, will automatically be treated as an application filed under 37 CFR 1.53(b). All continuation and divisional applications filed under 37 CFR 1.60 prior to December 1, 1997 will continue to be processed and examined under the procedures set forth in former 37 CFR 1.60. Thus, the following discussion of divisional-continuation practice under former 37 CFR 1.60 is being retained in the MPEP and all references to the rules in this section are directed to the rules that were in effect prior to December 1, 1997.]
(a) [Reserved]
(b) An applicant may omit signing of the oath or declaration in a continuation or divisional application (filed under the conditions specified in 35 U.S.C.120 or 121 and § 1.78(a)) if:
(1) the prior application was a nonprovisional application and a complete application as set forth in § 1.51(a)(1);
(2) applicant indicates that the application is being filed pursuant to this section and files a true copy of the prior complete application as filed including the specification (with claims), drawings, oath or declaration showing the signature or an indication it was signed, and any amendments referred to in the oath or declaration filed to complete the prior application;
(3) the inventors named in the continuation or divisional application are the same or less than all the inventors named in the prior application; and
(4) the application is filed before the patenting, or abandonment of, or termination of proceedings on the prior application. The copy of the prior application must be accompanied by a statement that the application papers filed are a true copy of the prior complete application. Such statement must be by the applicant or applicant"s attorney or agent and must be a verified statement if made by a person not registered to practice before the Patent and Trademark Office. Only amendments reducing the number of claims or adding a reference to the prior application (§ 1.78(a)) will be entered before calculating the filing fee and granting the filing date. If the continuation or divisional application is filed by less than all the inventors named in the prior application, a statement must accompany the application when filed requesting deletion of the names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application. Except as provided in paragraph (d) of this section, if a true copy of the prior application as filed is not filed with the application or if the statement that the application papers are a true copy is omitted, the application will not be given a filing date earlier than the date upon which the copy and statement are filed, unless a petition with the fee set forth in § 1.17(i) is filed which satisfactorily explains the delay in filing these items.
(c) If an application filed pursuant to paragraph (b) of this section is incomplete for reasons other than those specified in paragraph (d) of this section, applicant will be notified and given a time period within which to complete the application in order to obtain a filing date as of the date of filing the omitted item provided the omitted item is filed before patenting or abandonment of or termination of proceedings on the prior application. If the omission is not corrected within the time period set, the application will be returned or otherwise disposed of; the fee, if submitted, will be refunded less the handling fee set forth in § 1.21(n).
(d) If an application filed pursuant to paragraph (b) of this section is otherwise complete, but does not include the appropriate filing fee or a true copy of the oath or declaration from the prior complete application, showing the signature or an indication it was signed, a filing date will be granted and applicant will be so notified and given a period of time within which to file the fee, or the true copy of the oath or declaration and to pay the surcharge as set forth in § 1.16(e) in order to prevent abandonment of the application. The notification pursuant to this paragraph may be made simultaneously with any notification pursuant to paragraph(c) of this section.
The 37 CFR 1.60 practice was developed to provide a procedure for filing a continuation or divisional application where hardships existed in obtaining the signature of the inventor on such an application during the pendency of the prior nonprovisional application. It is suggested that the use of the 37 CFR 1.60 practice be limited to such instances in view of the additional work required by the Office to enter preliminary amendments. If no hardship exists in obtaining the signature of the inventor, the application should be filed under 37 CFR 1.53(b)(1) not under 37 CFR 1.60. It is pointed out that a continuation or divisional application may be filed under 37 CFR 1.53(b)(1), 37 CFR 1.60, or 37 CFR 1.62. 37 CFR 1.60 or 37 CFR 1.62 practice may not be used when filing an application where the immediate prior application was a provisional application under 35 U.S.C. 119(e).
37 CFR 1.60 practice permits persons having authority to prosecute a prior copending nonprovisional application to file a continuation or divisional application without requiring the inventor to again execute an oath or declaration under 35 U.S.C. 115, if the continuation or divisional application is an exact copy of the prior nonprovisional application as executed and filed. It is not necessary to file a new oath or declaration which includes a reference to the nonfiling of an application for an inventor's certificate in 37 CFR 1.60 applications filed after May 1, 1975. Likewise, it is not necessary to have the inventor sign a new oath or declaration merely to include a reference to the duty of disclosure if the parent application was filed prior to January 1, 1978, or to indicate that the inventor has reviewed and understands the contents of the application if the parent application was filed prior to October 1, 1983.
Where the immediate prior nonprovisional application was not signed (for example, where it was filed under the former 37 CFR 1.147 or * 37 CFR 1.60 or 37 CFR 1.62 practice), a copy of the most recent nonprovisional application having a signed oath or declaration in the chain of copending prior nonprovisional applications under 35 U.S.C. 120 must be used.
The basic concept of 37 CFR 1.60 practice is that since the inventor has already made the affirmation required by 35 U.S.C. 115, it is not necessary to make another affirmation in a later application that discloses and claims only the same subject matter. It is for this reason that a 37 CFR 1.60 application must be an exact duplicate of an earlier nonprovisional application executed by the inventor. It is permissible to retype pages to provide clean copies.
As mentioned previously, a 37 CFR 1.60 application must consist of a copy of an executed nonprovisional application as filed (specification, claims, drawings, and oath or declaration). The application must also include a clear indication that a filing under 37 CFR 1.60 is desired. The use of transmittal form PTO/SB/13 is urged since it acts as a checklist for both applicant and the Office and includes a specific request for an application under 37 CFR 1.60. If an application is filed under 37 CFR 1.60, all requirements of that rule must be met.
Although a copy of all original claims in the prior nonprovisional application must appear in the 37 CFR 1.60 application, some of the claims may be canceled by request in the 37 CFR 1.60 application in order to reduce the filing fee (see form PTO/SB/13, item 5). Any preliminary amendment presenting additional claims (claims not in the prior application as filed) should accompany the request for filing an application under 37 CFR 1.60, but such an amendment will not be entered until after the filing date has been granted. Any claims added by amendment should be numbered consecutively beginning with the number next following the highest numbered original claim in the prior executed nonprovisional application. The Office of Initial Patent Examination should not review preliminary amendments (in the transmitted letter or separate paper accompanying the application) for evidence of missing claims in applications filed under 37 CFR 1.60. Any errors in the numbering of claims in preliminary amendment(s) can be corrected in the examining groups. Amendments made in the prior nonprovisional application do not carry over into the 37 CFR 1.60 application. Any preliminary amendment should accompany the 37 CFR 1.60 application and be directed to "the accompanying 37 CFR 1.60 application" and not to the prior nonprovisional application. Applicants should submit preliminary amendments on filing or promptly thereafter to assure examiner consideration when the 37 CFR 1.60 application is picked up for examination.
All application copies must comply with 37 CFR 1.52 and must be on paper which permits entry of amendments thereon in ink.
A copy of the nonprovisional application must be prepared and submitted by the applicant, or his or her attorney or agent, and include a statement that it is a true copy. The copy of the oath or declaration need not show a copy of the inventor's or notary's signature provided that all other data is shown and an indication is made on the oath or declaration that the oath or declaration has been signed. For example, if the inventor's or notary's signature is not shown on the copy of the oath or declaration, the notation "/s/" may be added to the copy of the oath or declaration on the line provided for the signature to indicate that the original oath or declaration was signed.
In order to obtain a filing date under 37 CFR 1.60 a copy of all pages of the application, including description, claims, any drawings, and the statement that the application papers are a true copy of the prior application are required to be submitted. If all these items are not submitted, remedy is by way of petition under 37 CFR 1.60(b) and payment of the fee under 37 CFR 1.17(i). Paragraph (d) of 37 CFR 1.60 which was added effective Jan. 4, 1993, provides for the filing fee and/or true copy of the oath or declaration from the prior nonprovisional application to be filed on a date later than the filing date with payment of the surcharge set forth in 37 CFR 1.16(e).
Claims for priority rights under 35 U.S.C. 119(a)-(d) must be made in 37 CFR 1.60 applications if it is desired to have the foreign priority data appear on the issued patent. In re Van Esdonk, 187 USPQ 671 (Comm'r Pat. 1975). Reference should be made to certified copies filed in a prior application if reliance thereon is made.
If the claims presented by amendment in a 37 CFR 1.60 application are directed to matter shown and described in the prior nonprovisional application but not substantially embraced in the statement of invention or claims originally presented, the applicant should file a supplemental oath or declaration under 37 CFR 1.67 as promptly as possible.
In view of the fact that 37 CFR 1.60 applications are limited to continuations and divisions, no new matter may be introduced in a 37 CFR 1.60 application, 35 U.S.C. 132. Continuation-in-part applications may only be filed under 37 CFR 1.53(b)(1) or 37 CFR 1.62.
A statement to the effect that the submitted copy is believed to be a true copy of the prior nonprovisional application as filed to the best of his or her information and belief is sufficient, if an explanation is made as to why the statement must be based only on belief.
If the 37 CFR 1.60 application is being filed by less than all the inventors named in the prior nonprovisional application, a statement must accompany the application, when it is filed, requesting deletion of the names of the person or persons who are not inventors of the invention being claimed in the 37 CFR 1.60 application. For example, this situation could occur when a divisional application is being filed directed to one of the inventions disclosed and claimed in the prior nonprovisional application. No petition under 37 CFR 1.48 for correction of inventorship is required when filing under 37 CFR 1.60 unless there was an error in the omission of a named inventor in the prior nonprovisional application which was not corrected prior to the filing of the 37 CFR 1.60 application.
If the inventorship shown on the original oath or declaration has been changed and approved during the prosecution of the prior nonprovisional application, the 37 CFR 1.60 application papers must indicate such a change has been made and approved by providing a copy of the petition for correction of inventorship under 37 CFR 1.48 in order that the changed inventorship may be indicated in the 37 CFR 1.60 application. The 37 CFR 1.60 application papers should also include any additions or changes in an inventor's citizenship, residence or post office address made and approved in the prior nonprovisional application.
If small entity status has been established in a parent application, it is not necessary to again file a statement under 37 CFR 1.27 if the small entity status is desired in a 37 CFR 1.60 application. The 37 CFR 1.60 application must, however, include a reference to the statement in the parent application if the small entity, status is still proper and desired ( 37 CFR 1.28(a)).
If the parent application was filed by other than the inventor under 37 CFR 1.47, a copy of all the petition papers filed under 37 CFR 1.47 must also be filed.
Formal drawings are required in 37 CFR 1.60 applications as in other applications. A request to transfer drawings from a prior nonprovisional application does not relieve the applicant from the obligation to file a copy of the drawings originally filed in the prior nonprovisional application. If informal drawings are filed with the application papers, the examiner should use form paragraph 2.02 for formal drawing requirement.
This application, filed under former 37 CFR 1.60, lacks formal drawings. The informal drawings filed in this application are acceptable for examination purposes. When the application is allowed, applicant will be required to submit new formal drawings. In unusual circumstances, the formal drawings from the abandoned parent application may be transferred by the grant of a petition under 37 CFR 1.182.
This form paragraph is to be used only when the parent application contains approved formal drawings and has been abandoned.
Any drawing corrections requested but not made in the prior nonprovisional application should be repeated in the 37 CFR 1.60 application if such changes are still desired.
Use form paragraph 2.04 for instructions to applicant where drawing corrections have been requested in the parent application.
The drawings in this application are objected to by the Draftsperson as informal. Any drawing corrections requested, but not made in the prior application, should be repeated in this application if such changes are still desired. If the drawings were changed and approved during the prosecution of the prior application, a petition may be filed under 37 CFR 1.182 requesting the transfer of such drawings, provided the parent application has been abandoned. However, a copy of the drawings as originally filed must be included in the 37 CFR 1.60 application papers to indicate the original content.
Use form paragraphs 6.39 and 6.40 with this paragraph.
Affidavits and declarations, such as those under 37 CFR 1.131 and 37 CFR 1.132 filed during the prosecution of the prior nonprovisional application do not automatically become a part of the 37 CFR 1.60 application. Where it is desired to rely on an earlier filed affidavit, the applicant should make such remarks of record in the 37 CFR 1.60 application and include a copy of the original affidavit filed in the prior nonprovisional application.
Use form paragraph 2.03 for instructions to applicant concerning affidavits and declarations in the parent application.
Applicant refers to an affidavit or declaration filed in the parent application. Affidavits or declarations, such as those submitted under 37 CFR 1.131 and 37 CFR 1.132, filed during the prosecution of the parent application do not automatically become a part of this application. Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make the remarks of record in the later application and include a copy of the original affidavit or declaration filed in the parent application.
This form paragraph is to be used in applications filed under 37 CFR 1.53(b) and former 37 CFR 1.60. Do not use this form paragraph in applications filed under 37 CFR 1.53(d) and former 37 CFR 1.62 applications, since affidavits and/or declarations, such as those submitted under 37 CFR 1.131 and 37 CFR 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) and former 37 CFR 1.62 applications.
Under 37 CFR 1.60 practice the prior nonprovisional application is not automatically abandoned upon filing of the 37 CFR 1.60 application. If the prior nonprovisional application is to be expressly abandoned, such a paper must be signed in accordance with 37 CFR 1.138. A registered attorney or agent not of record acting in a representative capacity under 37 CFR 1.34(a) may also expressly abandon a prior nonprovisional application as of the filing date granted to a continuing application when filing such a continuing application.
If the prior nonprovisional application which is to be expressly abandoned has a notice of allowance issued therein, the prior nonprovisional application can become abandoned by the nonpayment of the issue fee. However, once an issue fee has been paid in the prior application, even if the payment occurs following the filing of a continuation application under 37 CFR 1.60, a petition to withdraw the prior nonprovisional application from issue must be filed before the prior nonprovisional application can be abandoned ( 37 CFR 1.313).
If the prior nonprovisional application which is to be expressly abandoned is before the Board of Patent Appeals and Interferences, a separate notice should be forwarded by the applicant to such Board, giving notice thereof.
After a decision by the Court of Appeals for the Federal Circuit (CAFC) 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 and Trademark Office. Continental Can Company, Inc., v. Schuyler, 168 USPQ 625 (D.D.C. 1970). See MPEP § 1216.01.
The practice relating to making first action rejections final applies also to 37 CFR 1.60 applications. See MPEP § 706.07(b).
Any preliminary amendment filed with a 37 CFR 1.60 application which is to be entered after granting of the filing date should be entered by the technical support staff of the Technology Center (TC) where the application is finally assigned to be examined. Any errors in the numbering of claims in preliminary amendment(s) can be corrected in the examining groups. Accordingly, these applications should be classified and assigned to the proper TC 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 application was incomplete, e.g., pages of specification missing or drawing sheets missing, the application should be returned to the Office of Initial Patent Examination (OIPE) via the Office of Petitions.
Form PTO/SB/13 is designed as an aid for use by both applicant and the U.S. Patent and Trademark Office and should simplify filing and processing of applications under 37 CFR 1.60.
Form PTO/SB/13 Request For Filing A Patent Application Under 37 CFR 1.60.
Form PTO/SB/13. Request for Filing a Patent Application Under 37 CFR 1.60 [Page 2 of 2]
Go to MPEP - Table of Contents