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# Chapter 200 Types, Cross-Noting, and Status of Application 201 Types of Applications 201.01 Sole 201.02 Joint 201.03 Convertibility from Joint to Sole Application 202.06 In Case of Reissues 201.04 Original or Parent 203 Status of Applications 201.05 Reissue 203.01 New 201.06 Divisional 203.02 Rejected 201.07 Continuation 203.03 Amended 201.08 Continuation-in-part 203.04 Allowed 201.09 Substitute 203.05 Abandoned 203.06 Incomplete 203.07 Forfeited 203.08 "Status Letters" 201.12 Assignment Carries Title 201.13 International Convention for the Protection of Industrial Property Proving of Foreign Filing for "Normal" Pri- ority 201.14 : 201.15 Examiner's Determination of Foreign Filing Public Law 690 201.16 201.16 (a) Time Limits for Obtaining Benefit of Law Counties Granting Reciprocity 201.16 (b) 201.16(c) Allegation as to Citizenship in Reciprocat- ing Country 201.16 (d) Proof of Contents of Foreign Application 201.16 (e) Effect on Term of Patent 201.16(f) When No Papers Have Been Filed 201.16(g) Actions Must Be Responded to 201.16 (h) Requirements of the Statute 201.16(i) The Request in Writing 201.16(j) Certified Copy of Foreign Application 201.16(k) Sworn Translation 201.16(1) Affidavit of Inventor 201.16 (m) Examiner Must Determine Right to Rely on Foreign Application Action by Examiner 201.16 (n) 201.16(0) Examiner's Letter 201.16(p) Date Refused or Granted 201.16 (q) Allowed Applications 201.16(r) Applications on Appeal 201.16 (s) Applications in Interference 201.16(t) Application Oath 201.16(u) Submission of Cases to Supervisory Examiner. 201.17 Fee Exempt, Government-Owned. 202\. Cross-Noting 202.01 In Specification 202.02 On File Wrapper of Division, Continuation, Substitute, or Continuation-in-part 202.03 On File Wrapper when Foreign Application is Acknowledged ## 201 Types of Applications Patent applications fall into three broad types, viz., applications for "mechanical", de- sign, and plant patents. The term "mechani- cal", as here employed, embraces all applications and patents which are directed to a "new and useful art, machine, manufacture, or composi- tion of matter, or to any new and useful im- provement thereof." The specialized procedure which pertains to the examination of applica- tions 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 two or more persons have taken oath that they are the joint inventors of the claimed subject matter. ## 201.03 Convertibility From a Joint to a Sole Application Rule 45 (Second Paragraph) Joint Inventors. (b) If an application for patent has been made inadvert- ently or by mistake and without fraudulent intention 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 inventors upon filing a statement of the facts verified by all of the original applicants, and an oath as required by rule 65 by the applicant who is the actual inventor, provided the amendment is diligently made. An application can not be amended to add the name of a joint inventor who 2 201.10 Refile 201.11 Continuity between Applications : When En- titled to Filing Date 202.04 Foreign Patent Granted after Date of Speci- fication 202.05 In Oath <!-- PageBreak --> <!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" --> was omitted, but a new independent application must be filed. The conversion of a joint application into a sole application may also be effected by filing a sole application to take the place of the joint application, subject to the requirements of Rule 45. This would be equivalent to amending the original joint application. When a joint application is amended to a sole application, the file should be sent to the Appli- cation Branch for a revision of its record. See In re Roberts, 1920 C. D. 158; 273 O. G. 410, for a general discussion of the conversion of a joint to a sole application. See McGavack v. Strube, 50 U. S. P. Q. 513 for situations which may arise when the several joint applicants seek to file individual sole appli- cations based on the original joint application. The conversion of a sole into a joint applica- tion is not permitted. Ex parte Benes, 1925 C. D. 75; 339 O. G. 499. For the procedure to be followed when the joint application is involved in an interference, see 1111.07 and 1112.09 (m) to 1112.09 (p). ## 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 particulars. A detailed treatment of reissues will be found in chapter 1400. ## 201.06 Divisional A later application for a distinct or indepen- dent invention, carved out of a pending applica- tion and disclosing and claiming nothing not disclosed in the earlier or parent application, is known as a divisional application. Both the parent and the divisional application must be by the same applicant, except when the divi- sional application is a sole application converted from a prior joint application. (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 di- visional application. 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 amend- ment into the parent case. A divisional application is also referred to as a "division" of the parent case. Rute 147. Separate application for invention not elected. The non-elected inventions, those not elected after a requirement for division (rule 142), may be made the subjects of separate applications, which must conform to the rules applicable to original applications and which will be examined in the same manner as original applications. However, if such an application is filed before the original application is patented or becomes abandoned, and if it is identical with the origi- nal application as filed, the drawings being identical and the papers constituting an exact copy of the original papers which were signed and executed by the appli- cant, signing and execution by the applicant may be omitted ; such application may consist of the filing fee, a copy of the drawings complying to rules relating to drawings and a certified typewritten copy of the original application as filed, together with a proposed amend- ment, cancelling the irrelevant claims or other matter. For notation to be put on the file jacket by the Examiner in the case of a divisional application see 202.02. Since a joint application may, when the facts warrant it, be transformed into a sole applica- tion, a sole application may be a division of a joint application if the joint application con- tained an invention which was solely that of one of the joint applicants. However, the following conditions must be present : (a) It must appear that the joint application was filed "by mistake and without fraudulent intention." (b) On discovery of the mistake the party filing the sole application "must act with rea- sonable diligence and must assume the burden of establishing his good faith." (c) There must be filed in the sole application a disclaimer under oath by each of the other parties of the joint application. A later joint application, however, may not be termed a division of a prior application filed by one of the joint inventors. This follows from the doctrine of Ex parte Benes, 1925 C. D. 75; 339 O. G. 499. ## 201.07 Continuation A continuation is a second application for the same invention claimed in a prior application and filed before the original becomes abandoned. The applicant in the continuing application must be the same as in the prior application, unless the continuation is a sole converted from a joint application. The disclosure presented in the continuation must be the same as that of the original application, i. e., the continuation should not include anything which would con- ( FX ( ; <!-- PageBreak --> <!-- PageHeader="201.11" --> <!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" --> stitute new matter if inserted in the original application. Where an application has been prosecuted to a final rejection an applicant may have recourse to filing a continuation in order to introduce into the case a new set of claims and to establish a right to further examination by the Primary Examiner. A sole application may be a continuation of a joint application which was erroneously jointly filed. (Union Switch & Signal Co. v. Kodel et al., 1932 C. D. 530; 416 O. G. 3.) See condi- tions stated under 201.06 for a division. For notation to be put on the file jacket by the Examiner in the case of a continuation application see 202.02. ## 201.08 Continuation-in-Part 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 appli- cation (201.06) and the further condition that the applicant present an exact line of division between matters of joint invention and sole invention. (In re Perrin, 1944 C. D. 380; 565 O. G. 151.) For notation to be put on the file jacket by the Examiner in the case of a continuation-in-part application see 202.02. ## 201.09 Substitute The use of the term "Substitute" to designate an application which is in essence the duplicate of an application by the same applicant aban- doned before the filing of the later case, finds official recognition in the decision, Ex parte Komenak, 1940 C. D. 1; 512 O. G. 739. For notation to be put on the file jacket by the Examiner in the case of a substitute application see 202.02. ## 201.10 Re-file No official definition has been given the term Re-file, though it is sometimes used as an alter- native for the term Substitute. If the applicant designates his application as "re-file" and the Examiner finds that the appli- cation is in fact a duplicate of a former applica- tion by the same party which was abandoned prior to the filing of the second case, the Exam- iner should require the substitution of the word substitute for "re-file", since the former term has official recognition. The endorsement on the file wrapper that the case is a "substitute" will result in the further endorsement by the Assignment Branch of any assignment of the parent case that may have been made. ## 201.11 Continuity Between Applica- tions: When Entitled to Filing Date A division, continuation, or continuation-in- part is linked by co-pendency with the original or parent application; and contains, in whole or in part, identical disclosure in common with the original application. Such applications are en- titled to the effective filing date of the original application for only the common subject matter disclosed. A division, continuation, or continuation-in- part may be filed at any time during the pend- ency of the parent application. Such contin- uing application may be filed, for example, after an appeal to the Board or to the Court, provided the parent application has not become aban- doned (1215) ; or after the application has gone to issue (In re Febrey, 1943, C. D. 510; 554 O. G. 377). In the latter case the period of pendency includes the three months' extension where the final fee is paid and a three months' extension for the issuance of the patent is obtained. A substitute application is not linked by co- pendency with the original application and is not entitled to the effective filing date of the latter. As a matter of public policy, however, all substitute applications are required to in- clude a reference to the original application. This makes the original application accessible to the public for a fuller understanding of the basis for the allowance of claims in the substi- tute application, and facilitates investigations pertaining to questions of ownership, in case the parent case has been assigned. (201.12.) Such reference to the parent application also enables the Examiner to compare his action in the substitute application with those made in the parent application and to avoid the adop- tion of an inconsistent position. A substitute is not entitled to the benefit of the filing date of the original application for a con- structive reduction to practice. (In re Spitteler et al., 1908 C. D. 374; 134 O. G. 1301.) At most, such filing date can be availed of only as the date of conception, leaving to be determined the question of diligence as bridging any gap be- tween the date of a reference and the filing date of the substitute application. Any public use or patent or printed publica- tion prior to the filing date of the substitute even <!-- PageFooter="844380-49 -- 2" --> <!-- PageBreak --> <!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" --> though subsequent to the earlier application, if it discloses the subject matter of the claims, is a proper citation in the substitute application. ## 201.12 Assignment Carries Title Assignment of an original application carries title to any divisional, continuation, substitute or reissue application stemming from the origi- nal application and filed after the date of assign- ment. ## 201.13 International Convention for the Protection of Industrial Property SEc. 4887 R. S., 35 U. S. C. 32 (second paragraph). An application for patent for an invention or dis- covery ... filed in this country by any person who has previously regularly filed an application for a patent for the same invention [or] discovery . . . in a foreign country, which, by treaty, convention, or law, affords similar privileges to citizens of the United States shall have the same force and effect as the same appli- cation would have if filed in this country on the date on which the application for patent for the same inven- tion [or] discovery ... was first filed in such foreign country, provided the application in this country is filed within twelve months . .. from the earliest date on which any such foreign application was filed. But no patent shall be granted on an application for patent for an invention or discovery ... which had been patented or described in a printed publication in this or any foreign country more than one year before the date of the actual filing of the application in this coun- try, or which had been in public use or on sale in this country for more than one year prior to such filing. In the case of designs, the period is six months instead of twelve. The second paragraph of the statute accords what is known as a "right of priority" to appli, cant under certain conditions, which conditions are defined by an international treaty or agree- ment known as the International Convention for the Protection of Industrial Property. There are now forty countries, including the United States, adhering to this convention. One of the primary objects of the Convention is stated to be the equal treatment of the na- tionals of all participating countries. The con- vention also establishes certain rights in favor of these nationals. One of these rights is the so-called right of priority, which means that a filing of an application in any country which adheres to the convention is treated as having the legal, or constructive, effect of a filing in all countries, provided it is followed up, within twelve months, by an actual filing there. Under the provisions of Sec. 4887 R. S., 35 U. S. C. 32, the inventor's priority rights under the convention are based, not upon his citizen- ship, but upon the status of the country in which the earliest foreign filing was made as a party to the International Convention. ## 201.14 Proving of Foreign Filing for "Normal" Priority Extract from Rule 65. Oath of Applicant. If any application for patent has been filed in any foreign country by the applicant in this country, or by his legal representative or assigns, prior to his application in this country, he shall state the country or countries in which such application has been filed, giving the date of such application, and shall also state that no application has been filed in any other country or countries than those mentioned, and if no application for patent has been filed in any foreign country, he shall so state. This oath must be subscribed to by the affiant. No proof of the earlier filing is required unless a reference is brought to light which has an effective date earlier than applicant's United States filing date but later than the date of his foreign filing under the convention. Where the applicant acknowledges in his oath a first filed foreign application less than twelve months prior to his U. S. filing date, but antedating the reference, such foreign application will serve to avoid the reference if a certified copy of the for- eign application is filed, together with a sworn translation if the copy be not in English. Ex parte Mattlet, 1926 C. D. 62; 347 O. G. 1047. ## 201.15 Examiner's Determination of Foreign Filing The most important aspect of the Examiner's action pertaining to a right of priority because of a foreign filing is the determination of the identity of invention between the U. S. and the foreign application. If it is for the same inven- tion, the foreign application may be considered in the same manner that a duplicate U. S. Appli- cation filed on the same date would be considered and applicant is entitled to any claims based on such application that he would be entitled to under our laws and practice. The foreign appli- cation must be examined for the question of sufficiency of the description under R. S. 4888, 35 U. S. C. 33, as well as to determine if there is a basis for the claims sought. In some cases the matter of sufficiency of disclosure in the sense of having a sufficient basis for certain types of claims, as in chemical cases, may arise. 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 for November 1936, pages 770-774. According to British law the provi- sional specification does not need to contain a complete disclosure of the invention in the sense <!-- PageBreak --> <!-- PageHeader="201.16 (d)" --> <!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" --> of R. S. 4888, 35 U. S. C. 33, but need only de- scribe the general nature of the invention, and neither claims nor drawings are required. Con- sequently, in considering such provisional speci- fications, the question of completeness of dis- closure is important. If it is found that the British provisional specification is insufficient, for lack of disclosure or other reason, reliance may then be had on the complete specification if one has been presented, the latter being treated as a different applica- tion. It may occasionally happen that the U. S. ap- plication will be found entitled to the filing date of the foreign application with respect to some claims and not with respect to others. In such a case, the examiner's letter will state that the applicant is considered entitled to the foreign date with respect to certain named claims and is not so entitled with respect to other claims, with the reasons for the latter statement being given. Occasionally, an applicant may rely on two different foreign applications and may be en- titled to the filing date of one of them with re- spect to certain claims and to the other, with respect to other claims. In such a case, the Ex- aminer's letter will specify the claims relating to each of the applications. ## 201.16 Public Law 690 201.16 to 201.16 (u) are a combination of the Notices of August 30, 1946, Circular of May 1, 1947, Memorandum of November 12, 1947, and Notice of May 19, 1948, with a few revisions. Public Law 690 (79th Congress, approved Aug. 8, 1946) was enacted for the purpose of restoring, to a certain extent, priority rights which may have been lost as a result of war conditions. This act extends, if certain conditions are met, the twelve months' period (six months in the case of designs) provided in the second paragraph of Sec. 4887 R. S. 35 U. S. C. 32. In addition to all other legal requirements, the citizenship of the inventor becomes material; that is, he must either be a citizen of the United States or a citizen of a country which grants reciprocal privileges to citizens of the United States. The deci- sion as to the inclusion of a given country is deter- mined by the Commissioner of Patents after consul- tation with the State Department, and notices are issued and published from time to time in the Offi- cial Gazette listing countries which have been added. The list, to date (Feb. 1949), is given in 201.16 (b). ## 201.16 (a) Time Limits for Obtain- ing Benefit of Law The extreme limit of the benefit of Public Law 690 (as extended by Public Law 220) applies to cases filed abroad after Sept. 8, 1938, and in this country on or before Feb. 29, 1948. See 201.16 (b) for shorter periods in some cases. Request for priority under the Act may be filed at any time during the pendency of the U. S. application. Although Feb. 29, 1948, fell on a Sunday, the Pat- ent Office has ruled that applications filed on the next following day, i. e., March 1, 1948, are not en- titled to the priority benefits of the Act. ## 201.16 (b) Countries Granting Reci- procity Time Limit for filing applications in United Country: States Australia February 29, 1948 Austria February 29, 1948 Belgium February 29, 1948 Brazil December 31, 1946 Bulgaria February 29, 1948 (1) Canada November 15, 1947 Czechoslovakia February 29, 1948 Denmark February 29, 1948 Finland February 29, 1948 France February 29, 1948 Great Britain February 29, 1948 Holland December 31, 1947 Hungary February 29, 1948 (1) Italy February 29, 1948 (1) Ireland February 29, 1948 Luxembourg February 29, 1948 New Zealand February 29, 1948 Norway December 31, 1947 Palestine February 29, 1948 Phillippines February 29, 1948 Poland February 29, 1948 Roumania February 29, 1948 (1) Spain February 29, 1948 Sweden February 29, 1948 Switzerland February 29, 1948 Union of South Africa February 29, 1948 (1) In the case of citizens or subjects of Bul- garia, Hungary, Italy, and Roumania, the benefits are limited to applications filed abroad after De- cember 8, 1940. This date was fixed by Public Law 380 which removed the disability imposed on these enemy aliens by Public Law 690, Sec. 14. ## 201.16 (c) Allegation as to Citizenship in Reciprocating Country An allegation as to citizenship in a country grant- ing reciprocal privileges is sufficient. Proof is not required unless there is some inconsistency. ## 201.16 (d) Proof of the Contents of Foreign Application In addition to citizenship, other conditions are im- posed. As contrasted with the procedure in the "normal" right of priority, proof of the contents of <!-- PageBreak --> <!-- PageHeader="201.16 (e)" --> <!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" --> the foreign application must be advanced by the applicant. 201.16 (e) Effect on Term of Patent Section 10 of Public Law 690 provides for the short- ening of the term of the United States patent so that it will expire not later than twenty years from the filing date of the earliest application in any country disclosing the same invention. In any of these cases where the priority date may be different for different claims, the term of the patent as a whole will be determined by the earliest foreign application, since section 10 reads: "twenty years from the filing date of the first application" and the Patent Office will not specify different terms for different claims in the same patent. ### 201.16 (f) When No Papers Have Been Filed The Act specifically requires the applicant to re- quest the extended period of priority and to supply certain papers. Until and unless the required mate- rial is furnished, examiners will act on applications in the usual way, that is, they will cite and use what- ever references and grounds of rejection may be applicable, considering the actual filing date of the application in the United States as the only date to which it is entitled. However, if it appears that the applicant is attempting or intends to obtain the extended period of priority but is unaware of the conditions, his attention may be called to such con- ditions. In some cases there may be a statement that the applicant relies on a foreign filing date. The Ex- aminer should mention in his action that no reliance can be placed on the foreign filing date until and unless the requirements of Section 1 of Public Law 690 are met. 201.16 (g) Actions Must Be Re- sponded To. Filing of Papers Does Not Excuse a Reply to An Action While the papers may be filed during the pend- ency of the application, applicants are not relieved of the necessity of replying to Office actions within the statutory time limit and of making as complete a response as is ordinarily required. = # 201.16 (h) Requirements of the Stat- ute The statute requires of those who wish the ex- tended period of priority under Section 1 the follow- ing: (a) A request in writing; (b) A copy of the original foreign application, certified to by the country in which filed; (c) A sworn translation thereof if not in the English language; (d) An affidavit by the inventor in certain cases. # 201.16 (i) Requirements, the Request in Writing The written request for the extended period of priority need not be a formal paper signed by the inventor. It may be contained in the letter of the attorney transmitting the papers or in some other letter and no specific form is necessary. It must appear definitely and not merely by implication that the applicant is seeking the benefit of Section 1 of the Act, and preferably it should specify the foreign application and date, the benefit of whose filing date is requested. # 201.16 (j) Requirements, Certified Copy of Foreign Applica- tion The copy of the foreign application presented under Section 1 of Public Law 690 must be an accu- rate copy of the foreign application as filed, and the certificate by the foreign patent office must make this evident, as has been customary. In some in- stances a printed copy of the patent as issued may be used. This is not sufficient unless the certificate indicates that it is a true copy of the application as filed. In French cases, the printed patent is prac- tically always a duplicate of the application as filed since substantial amendments are not permitted. Most countries, however, permit amendment of the application and hence a copy of the patent is not proof of the application as filed. Section 1 of Public Law 690 permits other evidence in lieu of a certified copy of the original application if the original foreign application has been de- stroyed. Generally, the only "other evidence" which has been considered is a certified copy of a certified copy. For example, a copy of a German application certified by the German Patent Office in the proper manner may have been filed in the Swiss or Dutch Patent Office. A copy of these papers, certified to by the Patent Office of Switzerland or Holland as being a true copy of the papers there filed, has been ac- cepted in appropriate cases. Cases in which "other evidence" is offered should be referred to the Super- Visory Examiners for consideration. # 201.16 (k) Requirements, Sworn Translation A sworn translation if the foreign application is not in the English language is also required. This means a translation which is sworn to and not a translation made by a so-called "sworn translator", which phrase is used in some countries. Oaths taken in foreign countries for use in this country should be authenticated by a diplomatic or consular officer of the United States if not taken before such officer. <!-- PageBreak --> 201.16 (p) <!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" --> # 201.16 (1) Requirements, Affidavit of Inventor The statute further requires: If the foreign application was not made by the inventor himself, an affidavit by the applicant [in the U. S.] or patentee [in the U. S.] stating that such application was filed for his [the inventor's] benefit or on his behalf and that such procedure is in accord- ance with the procedure in the foreign country. (Bracketed matter added.) The purpose of this requirement is to take care of the situation in which the foreign application was not filed by the inventor but by an agent or represen- tative as is permitted in some countries. In such cases the inventor, who is the applicant here, must make the required affidavit. Cases also arise in which the foreign application was made by the assignee of the inventor. The affidavit by the inventor is likewise required in such cases; the phrase "for his benefit or on his behalf" then meaning that the application was filed by the assignee in place of the inventor as permitted by the law of the country. In some instances the foreign application may have been filed jointly by the inventor and the assignee as joint applicants as is permitted in some countries. An affidavit will not be required in these cases; the word "himself" is not taken to mean "alone". If the relationship of the foreign appli- cants is not evident, an explanation may be required. ## 201.16 (m) Examiner Must Deter- mine Right To Rely on Foreign Application Even when determination of the right to rely on the foreign application may not be necessary for the purpose of overcoming a reference, so far as the examiner knows, such determination is required in each instance where applicant includes papers pertaining to Public Law 690, because the Act im- poses various restrictions on the patent, e. g., Sec- tion 10 provides that the term of the patent be appropriately adjusted. ## 201.16 (n) Action by the Examiner When papers are received in an application pend- ing before the examiner (including those applica- tions awaiting action by the applicant), such pa- pers are to be entered in the file and are to be con- sidered by the examiner at the time of the next regular action Usually no acknowledgment need be made at the time of receipt; but if, for any rea- son, acknowledgment is found to be necessary it should not count as an action in the case. When the case comes up for regular action the examiner should examine the papers for formal compliance with the requirements. In the case of applications filed by citizens of countries with respect to which reciprocity has not yet been announced, the examiner should check the status of the country with the Supervisory Examiner and act in accordance with the latter's instructions. Until the case is ready for issue or all the claims allowed (ex parte Quayle 1935 C. D. 11; 453 O. G. 213), the Examiner need not determine whether the foreign application is for the "same invention" as applied for in the United States unless any statutory bar or pertinent reference is found which would be eliminated by the priority date. If any such statu- tory bar or reference is found, a complete action on the right of priority as to all the claims should be given. ## 201.16 (o) Action by Examiner, Ex- aminer's Letter The next regular Office letter following filing of the papers should include a statement with reference to the papers under Public Law 690 and said state- ment should appear at the beginning of the letter. Where the papers do not meet the formal require- ments the particular deficiencies should be noted. In those cases where the formal requirements are satisfied but no ruling is made on the question of "same invention", the following form is suggested: Receipt is acknowledged of papers filed on 194 __ , under Sec- tion 1 of Public Law 690. These papers have been placed on record in the file as complying with the formal requirements of the Act. Determination of whether the claims herein are for the same invention as that disclosed in the foreign application is not made at this time. # 201.16 (p) Action by Examiner, Date Refused or Granted In those cases where a ruling on the matter of priority is made and the date is refused, the reasons should be stated. Where the applicant is found to be entitled to the foreign filing date, a statement should be incorporated in the letter that the appli- cant is entitled to the filing date of a particular foreign application for all or certain specified claims. A form for such statement could be as follows: Applicant having complied with the pro- visions of Sections 1, Public Law 690, ap- proved August 8, 1946, this application is considered entitled to a priority date corre- sponding to the filing date of the applica- tion filed in on as to claims In those cases where a ruling on the right of priority is not made until the case is ready for issue or all the claims allowed, the Examiner should at <!-- PageBreak --> <!-- PageHeader="201.16 (q)" --> <!-- PageHeader=": MANUAL OF PATENT EXAMINING PROCEDURE" --> that time state whether or not the applicant is en- titled to the priority date. If the date is refused, the reasons for so holding should be stated. If granted, a statement such as that embraced in the suggested form set forth in the immediately pre- ceding paragraph should be employed. This state- ment may be sent with the notice of allowance, and it should be combined with the examiner's amend- ment when such amendment is included. ## 201.16 (q) Action by Examiner, Al- lowed Applications If an application is in issue when the papers are received, the examiner should, if the final fee has not been paid, borrow the file from the Issue and Gazette Branch and treat it in the same manner as described above [201.16 (p)]. If the final fee has been paid the examiner should, if there is time, examine the papers promptly and write a letter in the same manner. Deferment of the issue of the patent may be requested if it is still possible. If the papers are received too late to take any of the above actions, they should be referred to the Super- visory Examiners. ## 201.16 (r) Action by Examiner, Ap- plication on Appeal If papers are filed after an appeal is taken, ap- propriate action may be taken by the examiner if the examiner's answer has not been written, and any rejection withdrawn or the appeal forwarded as may be appropriate. If the examiner's answer has been mailed the application will be remanded by the Board for consideration of the papers. ## 201.16 (s) Action by Examiner, Ap- plications in Interference If the papers are received while an application is involved in interference, they are to be placed in the application file in the same manner as amend- ments received during interference, and appropriate action taken after the termination of the inter- ference, if necessary. If the papers are to be relied on for proof of pri- ority in any interference, the party must act in the interference in accordance with interference rules and is subject to whatever rules relating to motions, notices, production of testimony, etc., may be ap- plicable. : ## 201.16 (t) Action by Examiner, Ap- plication Oath When the extended priority date is granted, cer- tain informalities or variations in the customary ap- plication oath may be permitted. The date of exe- cution of the oath may become immaterial and vari- ations as to the allegation of one year publication, use, etc., corresponding to the last paragraph of Section 1 of Public Law 690 may be encountered. An oath such as follows, as well as the customary oath, would ordinarily be acceptable: the above petitioner, being duly sworn, deposes and says that he is a citizen of and a resi- dent of that he verily believes himself to be the original, first and sole in- ventor of the improvement in described and claimed in the annexed specification; that he does not know and does not believe that said in- vention was ever known or used before his invention or discovery thereof, or patented or described in any printed publication in any country before his invention or discov- ery thereof, or prior to the filing of the ap- plication in (specify country) upon which the right of priority of the present applica- tion is based, or in public use or on sale in the United States prior to the filing of said application; that said invention has not been patented in any country foreign to the United States on an application filed by him or his legal representatives or assigns and that no application for patent on said inven- tion has been filed by him or said repre- sentatives or assigns in any country foreign to the United States, except as follows: (List all foreign applications and patents). ## 201.16 (u) Action by Examiner, Sub- mission of Cases to Super- visory Examiner Applications wherein action is taken on a request for the benefits of section 1 of Public Law 690 should be submitted to the Supervisory Examiner for review (before mailing of the examiner's letter) in the following instances: (1) If the action is one granting the priority benefits; and (2) If the action is one withdrawing previously allowed benefits. Applications in which the applicant seeks to with- draw or cancel a request for the extended priority date or the papers submitted, should be submitted to the Supervisory Examiner before any action is taken by the examiner. Applications should not be submitted to the Super- visory Examiner wherein an action is made refusing the benefits under Public Law 690, provided that no prior grant of such benefits has been made. If the application is placed in condition for allow- ance, having once been given the benefit of the priority date and all the claims still relate to the "same invention", it may be passed to issue by the Examiner without again referring it to the Super- visory Examiner for approval. <!-- PageBreak --> <!-- PageHeader="202.04" --> <!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" --> (201.16 to 201.16 (u) above are a combination of the Notice of August 30, 1946, Circular of May 1, 1947, Memorandum of November 12, 1947 and Notice of May 19, 1948 with a few revisions.) # 201.17 Fee-Exempt, Government Owned The terms "fee-exempt" and "Government Owned" as well as "Act of 1883 application", apply to applications for which no fee is re- quired, according to the provisions of the Act of March 3, 1883, as amended. See 607 and 607.01. # 202 Cross-Noting 202.01 In Specification Extract from Rule 78. Cross-references to other ap- plications. (a) When an applicant files an applica- tion claiming an invention disclosed in a prior filed application of the same applicant, the second applica- tion must contain a reference to the prior application, identifying it by serial number and filing date and indicating the relationship of the applications. When an applicant files, or a common assignee owns, two or more applications relating to the same subject matter of invention, with one or more of the applications dis- closing unclaimed matter that is disclosed and claimed in another of the applications, the applications not. claiming it must refer to and identify the application claiming it. Cross-reference to other related applica- tions may be made when appropriate. See rule 14 (b). When an application is filed which in the opinion of the Examiner is a division of, a continuation of, a continuation-in-part of, or a substitute for a previ- ously filed application, but which contains no refer- ence in the specification to such prior application, the Examiner will require applicant to insert the proper reference to the prior application in the spec- ification. If, when the case is otherwise in condi- tion for allowance, this requirement has not been complied with, nor shown to have been improperly made, the proper reference to the prior application will be made by an Examiner's amendment and the application passed to issue forthwith. (Order No. 2822.) There is seldom a reason for one application to refer to the application of another applicant not assigned to a common assignee. Such refer- ence ordinarily should not be permitted. ## 202.02 Notation as to Parent Applica- tion on Jacket and in File of a Divisional, Continuation, Con- tinuation-in-Part, or Substitute Application The identifying data of a parent or prior applica- tion must be given in the specification and must be inserted by the Examiner on the left margin of the file jacket in the case of a DIVISION, a CONTINUA- TION, or a SUBSTITUTE Application. The file jacket bears on the left hand margin, the legend: "Division of Application No. ____ , filed 19 __. " This is to be filled in at the time of the first action with the serial number and date of any prior application of which the one in question is a division, a continuation, or a substitute, the word "Division" being replaced by Continuation, and the words "Divi- sion of" replaced by Substitute for abandoned, as may be required. If the prior application has issued as a patent, the patent number and date should also be supplied. If the application at hand is a division of a division, the data of all cases involved should be given. (Order No. 1832, Revised.) In the case of a continuation-in-part the iden- tifying data of the parent or prior application must be given in the specification and the Exam- iner must stamp only the letter C-P. on the file jacket. One of the reasons for these notations being put on the file jacket is that they indicate to the Docket Clerk when an application is a DIVISION, CON- TINUATION, CONTINUATION-IN-PART, or a SUBSTITUTE. These four types of applications must be sent to the Assignment Branch for a title search when in condition for allowance. (Order No. 3411, Revised.) See 306 for work done by the As- signment Branch pertaining to these particular types of applications. Only the letters C-P. (without data) are placed on the file jacket in the case of a continu- ation-in-part because the printer does not use the data of the prior application in setting up the heading when printing a continuation-in- part patent. ## 202.03 On File Wrapper When Foreign Application is Acknowledged Where applicant acknowledges a prior for- eign application, the country where filed and the date of filing are noted at the bottom of the face of the file wrapper. Where there are two or more such earlier foreign applications, only the earliest filed of these is noted, except that all foreign applications filed more than twelve months prior to the U. S. application must be noted on the file wrapper. (Six months in the case of designs.) This notation in cases which have been given the benefit of the Boykin Act (Public Law 690) is replaced by the label pasted on the face of the file wrapper. See 1802.06. # 202.04 Foreign Patent Granted After Date of Specification An applicant will not be required in any case to file a statement setting forth the data of any foreign <!-- PageBreak --> <!-- PageHeader="202.05" --> <!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" --> patent granted him, or to others with his knowledge or consent between the date of execution of his speci- fication and the date of the payment of the final fee. (Order No. 1239.) ## 202.05 In Oath As will be noted by reference to 201.14, Rule 65 requires that the oath include a list of the foreign countries in which applications have been filed by applicant's representative. If no applications for patent have been filed in any foreign country, the oath should so state. ### 202.06 In Case of Reissues Rule 179 requires that a notice be placed in the file of an original patent for which an appli- cation for reissue has been filed. For the form employed for this notice see Clerk's Manual, Sec. 50. ### 203 Status of Applications #### 203.01 New A "new" application is one that has not yet received an action by the examiner. An amend- ment filed prior to the first Office Action does not alter the status of a "new" application. #### 203.02 Rejected An application which, during its prosecution in the examining division and before allowance, contains an unanswered examiner's action is designated as a "rejected" application. Its status as a "rejected" application continues as such until acted upon by the applicant in re- sponse to the examiner's action (within the allotted response period), or until it becomes abandoned. #### 203.03 Amended An "amended" or "old" application is one that, having been acted on by the examiner, has in turn been acted on by the applicant in re- sponse to the Examiner's action. The appli- cant's response may be confined to a traverse of the action taken by the Examiner or may include an amendment of the application. #### 203.04 Allowed or in Issue An "allowed" application or an application "in issue" is one which, having been examined, is passed for issue as a patent subject to payment of the final fee. Its status as an "allowed" case continues from the date of allowance until it is withdrawn from issue or until it issues as a patent or becomes forfeited. The files of allowed cases are kept in the Issue and Gazette Branch, arranged in the order of dates of allowance. # 203.05 Abandoned An abandoned application is, inter alia, one which is removed from the Office docket of pend- ing cases through formal abandonment by the applicant (acquiesced in by the assignee if there is one) or through failure of applicant to take appropriate action at some stage in the prosecu- tion of the case. (711 to 711.02 (b) ) ## 203.06 Incomplete An application lacking some of the essential parts and not accepted for filing is termed an incomplete application. (506 and 506.01) ## 203.07 Forfeited A forfeited application is one which had the status of an allowed case for six months and on which the final fee was not paid. See Rule 316 in 712. ## 203.08 Examiners To Answer "Status Letters" Inquiries as to the status of applications, by per- sons entitled to the information, should be answered promptly. Simple letters of inquiry regarding the status of applications will be transmitted from the Register, Correspondence and Mail Branch, to the examining divisions for direct action. Such letters will be stamped "Status Letters." If the correspondent is not entitled to the infor- mation, in view of Rule 14, he should be so informed. If the inquiry is directed to an application await- ing action by the Office, a prediction should be made of the probable date of reaching the case for action. . The examiner's reply should be typed on the letter of inquiry whenever possible, and signed by the Primary Examiner. The original letter of inquiry should be returned to the correspondent together with the reply. Such reply does not count as an action in the case. This prediction of a date is not to be considered as binding upon the examiner in making his next action. In cases of allowed applications, a memorandum should be pinned to the inquiry with a statement of date of notice of allowance, and transmitted to the Issue Branch for its appropriate action. This Branch will notify the inquirer of the date of the notice of allowance and the status of the applica- tion with respect to payment of the final fee and forfeiture. In those instances where the letter of inquiry goes beyond mere matters of inquiry, it should not be marked as a "status letter", or returned to the correspondent. Such letters must be entered in the application file as a permanent part of the rec- ord. The inquiry should be answered by the ex- aminer, however, and in a manner consistent with the provisions of Rule 14. (Notices of June 22, 1921, and May 6, 1948, revised.)
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