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Archived updates for Tuesday, January 30, 2007

New USPTO Procedures for Omitted Items in Nonprovisional Patent Applications

On January 29, 2007, the U.S. Patent and Trademark Office announced revised procedures for handling nonprovisional applications having omitted items (e.g., missing pages or figures or missing or uneadable compact discs). Under the revised procedure, applicants must reply to a notice regarding omitted items in a nonprovisional application within the time period set by the notice in order-to avoid abandonment. However, this time period is extendable under 37 CFR 1.136.

Applicants will continue to have the following three options:
  1. petition for the date of deposit by filing a petition under 37 CFR 1.53(e), asserting that the omitted item was in fact deposited in the Offce, along with evidence of such deposit (e.g., a date-stamped itemized postcard receipt) and the petition fee;

  2. petition for a later fiing date by filing the omitted item, along with a
    supplemental oath or declaration in compliance with 37 CFR 1.63 and 1.64 referrng to such item, a petition under 37 CFR 1. 182 and the petition fee requesting the date of such submission as the application filing date; and

  3. accept the application as deposited and filing an appropriate amendment to the application (e.g., a substitute specification).

Under the revised procedure, applicants who wish to accept the nonprovisional application as deposited (the third option) will be required to file an appropriate amendment (e.g., a substitute specification) within the extendable time period to avoid abandonment ofthe application. Applicants wil no longer be able to accept the nonprovisional application as deposited by failing to file a reply to the notice within the set time period.

If applicant wants to accept the application as deposited (without adding the subject matter that was in the omitted item), then the applicant is required to submit one òr more of the following items without adding any new matter (see 35 U.S.C. 132(a)):



  • For a missing page of the specification, a substitute specification (including claims) that amends the specification to renumber the pages consecutively and cancels any incomplete sentences, in compliance with 37 CFR l.i21(b)(3) and 1.125;

  • For a missing figure of the drawings, replacement drawing sheets in compliance with 37 CFR 1.121(d) to renumber the drawing figures consecutively (if necessary), a substitute specification (excluding claims) that amends the specification to cancel any references to any
    omitted drawing(s) and corrects the references in the specification to the drawing figures to correspond with any relabeled drawing figures, in compliance with 37 CFR 1. 12 1 (b)(3) and 1.125;

  • For a missing page of the claim listing only, a replacement claim listing with the claims renumbered consecutively or, if amendment to the claims is also necessar, then a complete claim listing in compliance with 37 CFR 1.121(c);

  • For a missing or unreadable compact disc, a substitute specification (excluding the claims) deleting the reference to the compact disc and the files contained on the compact disc, in compliance with 37 CFR 1. 121(b)(3) and 1.125; and

  • For a missing or unreadable fie submitted on a compact disc, a substitute specification (excluding the claims) deleting the reference to the missing or unreadable file, in compliance with 37 CFR 1.121(b)(3) and 1.125; and (b) a replacement transmittal letter listing all of the fies, except the missing or uneadable fie, in compliance with 37 CFR 1.52(e)(3)(ii).
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2 Comments:

Anonymous Anonymous said...

I have wondered about this since the rule change. If I omit a figure, which is well described in the Specification, why can't I just make the statement that it is not new matter, since it is supported in detail in the Specification. This is especially true for flowcharts, which are usually described step-by-step. Shouldn't I be able to simply put the figure back in, based on the specification included in the original filing?

January 30, 2007 4:58 PM  
Anonymous Anonymous said...

^^Thanks!!

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April 07, 2009 1:51 AM  

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