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1121 Content of a Patent Application Publication [R-2] - 1100 Statutory Invention Registration (SIR) and Pre-Grant Publication (PG Pub)
1121 Content of a Patent Application Publication [R-2]
37 CFR 1.215 Patent application publication
(a) The publication of an application under 35 U.S.C. 122(b) shall include a patent application publication. The date of publication shall be indicated on the patent application publication. The patent application publication will be based upon the application papers deposited on the filing date of the application, as well as the executed oath or declaration submitted to complete the application, and any application papers or drawings submitted in reply to a preexamination notice requiring a title and abstract in compliance with § 1.72, application papers in compliance with § 1.52, drawings in compliance with § 1.84, or a sequence listing in compliance with §§ 1.821 through 1.825, except as otherwise provided in this section. The patent application publication will not include any amendments, including preliminary amendments, unless applicant supplies a copy of the application containing the amendment pursuant to paragraph (c) of this section.
(b) If applicant wants the patent application publication to include assignee information, the applicant must include the assignee information on the application transmittal sheet or the application data sheet (§ 1.76). Assignee information may not be included on the patent application publication unless this information is provided on the application transmittal sheet or application data sheet included with the application on filing. Providing this information on the application transmittal sheet or the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
(c) At applicant's option, the patent application publication will be based upon the copy of the application (specification, drawings, and oath or declaration) as amended during examination, provided that applicant supplies such a copy in compliance with the Office electronic filing system requirements within one month of the actual filing date of the application or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later.
(d) If the copy of the application submitted pursuant to paragraph (c) of this section does not comply with the Office electronic filing system requirements, the Office will publish the application as provided in paragraph (a) of this section. If, however, the Office has not started the publication process, the Office may use an untimely filed copy of the application supplied by the applicant under paragraph (c) of this section in creating the patent application publication.
A patent application publication includes a front page containing information similar to that contained on the front page of a patent, the drawings (if any), and the specification (including claims). The patent application publication will generally be based upon the following:
(A) The patent application papers and drawings deposited on the filing date of the application;
(B) The executed oath or declaration submitted to complete the application;
(C) Any subsequently filed application papers and drawings submitted in reply to a preexamination notice requiring a title and abstract in compliance with 37 CFR 1.72, application papers in compliance with 37 CFR 1.52, drawings in compliance with 37 CFR 1.84, or a sequence listing in compliance with 37 CFR 1.821 through 1.825; and
(D) The correspondence address for the application according to Office records at the time the publication process was initiated.
The patent application publication may also be based upon amendments that expedite the publication process, provided that such amendments are submitted in sufficient time to be entered into the application file before technical preparations for publication of the application have begun (generally four months prior to the projected publication date). For example, the patent application publication may also be based upon:
(A) Amendments to the specification that are reflected in a substitute specification under 37 CFR 1.125(b);
(B) An amendment to the abstract under 37 CFR 1.121(b);
(C) Amendments to the claims that are reflected in a complete claim listing under 37 CFR 1.121(c); and
(D) Amendments to drawings under 37 CFR 1.121(d).
The patent application publication of an application that has entered the national stage under 35 U.S.C. 371 may also include amendments made during the international stage, such as: amendments under Article 34 and 19; rectifications; corrections of physical defects under PCT Rule 26; and an abstract rewritten by the International Searching Authority.
If an applicant wants the publication to include drawings other than those submitted with the application as filed (e.g., better quality or amended drawings), applicant may file the replacement drawings in sufficient time to be entered into the application file before four months prior to the projected publication date. The Office cannot guarantee that the latest amendment or any particular amendment will be included in the patent application publication. If applicant wishes to have a particular amended specification (including claims) and drawings to be included in the publication, applicants must submit the amended specification (including claims) and drawings via the electronic filing system (EFS) within one month of the mailing date of the first Office correspondence (e.g., filing receipt) including a confirmation number for the application or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later (see 37 CFR 1.215(c) and Assignment of Confirmation Number and Time Period for Filing a Copy of an Application by EFS for Eighteen-Month Publication Purposes, 1241 Off. Gaz. Pat. Office 97 (December 12, 2000)). See also III. AMENDED APPLICATION FILED VIA EFS, below. The Office will use the electronic copy provided by the applicant to create the publication. A proper continued prosecution application (CPA) filed on or after November 29, 2000 (but before July 14, 2003) will be published based upon the application papers deposited on the filing date of the first prior application.
Applicants may review the bibliographic information contained in the Office's database, and application papers that have been scanned into the Image File Wrapper system, via the Office's Patent Application Information Retrieval (PAIR) system. Applicants should bring any errors to the Office's attention before technical preparations for publication of the application have begun (generally four months prior to the projected publication date).
Long nucleotide and/or amino acid sequences or large numbers of such sequences are very difficult for the Office to publish as part of patent application publications. Therefore, long sequence listings will only be published in electronic form on the USPTO sequence homepage (http://seqdata.uspto.gov) as an ASCII text file. The patent application publication will include a statement that the application contains a lengthy sequence listing section and a hyperlink to the web page containing the sequence listing. See Notice of Change in Publishing of Patents and Patent Application Publications With Sequence Listings, 1250 Off. Gaz. Pat. Office 70 (September 11, 2001).
I. AMENDMENTS
The patent application publication will be based on certain amendments, including preliminary amendments as discussed above (e.g., amended application filed via EFS). To avoid submitting preliminary amendments, applicants should incorporate any desired amendments into the text of the specification including a new set of claims, even where the application is a continuation or divisional application of a previously-filed patent application. In such a continuation or divisional application, a new specification (e.g., reflecting amendments made in the parent application) may be submitted together with a copy of the oath or declaration from the previously filed application so long as no new matter is included in the specification. See 37 CFR 1.63(d)(1)(iii). Additionally, applications with poor quality text, which may be acceptable for scanning and examination purposes, may lead to errors in the patent application publication. Correction of these errors and inclusion of any desired amendments into the text of the originally-filed specification and drawings will only occur if applicant files a request for republication under 37 CFR 1.221(a). They will not be corrected by the Office in a corrected publication under 37 CFR 1.221(b). See MPEP § 1130.
II. APPENDICES
Appendices, other than those containing sequence listings or certain tables, are not printed if they are contained on pages located after the claims. If the application includes multiple claim sets in the specification, the Office may treat pages located after the first set of claims as appendices. Note that computer program listings may be printed if they are included in the specification before the claims, but that computer program listings that are provided on compact disc in accordance with 37 CFR 1.96(c) and 1.52(e) are not printed as part of the patent or patent application publication.
III. AMENDED APPLICATION FILED VIA EFS
At applicant's option, a patent application publication may be based upon an amended specification (including claims) and drawings filed via the Electronic Filing System (EFS). See 37 CFR 1.215(c). If applicant files a replacement copy of the specification (including claims) and drawings through EFS within one month of the filing date of the application or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later, the replacement copy will be used in printing the patent application publication. Since a confirmation number must be used when submitting an EFS copy of the application for publication, the Office will accept an EFS copy of the application submitted within one month of the mailing date of the first Office correspondence containing a confirmation number (e.g., filing receipt). See Assignment of Confirmation Number and Time Period for Filing a Copy of an Application by EFS for Eighteen-Month Publication Purposes, 1241 Off. Gaz. Pat. Office 97 (December 12, 2000). If the replacement copy is submitted outside the time period, it may still be used to create the patent application publication so long as it is received before the Office has started the publication process. For further information about EFS, see the Electronic Business Center on the USPTO web site (www.uspto.gov).
IV. ASSIGNEE INFORMATION
If the applicant would like the assignee data to be published, the information should be provided on the application transmittal letter or the application data sheet (ADS) filed with the application. The applicant may also submit the information via PAIR using the "Bib-Data Review Prior to Publication" screens or submit a letter to the Office requesting that the assignee's name be included on the patent application publication, and request a corrected filing receipt acknowledging the request. Requests to include assignment data that are submitted after the filing date of the application will only result in the patent application publication including the assignment data if it is received and entered before the publication process has begun. If the assignee data is recorded with the Assignment Division only, the information will not be published as part of the patent application publication.
Errors in assignee information printed on the publication are not considered material mistakes by the Office under 37 CFR 1.221(b) (e.g., errors in the assignee's name). See MPEP § 1130. Thus, these assignment errors and applicant's failure to include assignment data may only be corrected if applicant files a request for republication under 37 CFR 1.221(a).<
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