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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
Divisional

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

201.14
Right of Priority, Formal Requirements

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
On File . Wrapper of Division, Continuation,
Substitute, or Continuation-in-part.

202.03
On File Wrapper When Foreign Application Is
Acknowledged

-202.04
In Oath

202.05
In Case of Reissues

203
Status of Applications

203.01
New

203.02
Rejected

203.03

Amended

203.04

Allowed

203.05
Abandoned

203.06
Incomplete

203.07
Forfeited

203.08
"Status Letters"

## 201 Types of Applications

Patent applications fall under three broad
types; applications for patent under 35 U. S. C.
101 relating to a "new and useful process, ma-
chine, manufacture, or composition of matter,
etc.", applications for plant patents under 35
U. S. C. 161, and applications for design pat-
ents 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 ex-
amination 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

Rule 45. Joint Inventors (Second Paragraph). (b)
If an application for patent has been made through
error and without any deceptive 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 in-
ventors upon filing a statement of the facts verified
by all of the original applicants, and an oath as re-
quired by rule 65 by the applicant who is the actual
inventor, provided the amendment is diligently made.

It is possible to file 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 Application
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
applications based on the original joint ap-
plication.

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).

Conversion from a sole to a joint applica-
tion, which was not possible prior to January
1, 1953, is now permitted by 35 U. S. C. 116,
and a paragraph has been added to Rule 45
paralleling the procedure of the second
paragraph.

Rule 45. (Third Paragraph) Joint Inventors. If an
application for patent has been made through error
and without any deceptive intention by less than all
the actual joint inventors, the application may be
amended to include all the joint inventors upon filing
a statement of the facts verified by, and an oath as
required by Rule 65 executed by, all the actual joint
inventors, provided the amendment is diligently made.

An attempted second conversion, of either
type, in the same application must be referred
to the Supervisory Examiner. Any attempt to
make both types of conversions in the same
application must also be referred to the Super-
visory Examiner.

## 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. Either
type of conversion must have the written con-
sent of any assignee.

## 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 Divisional

A later application for a distinct or inde-
pendent invention, carved out of a pending ap-
plication and disclosing and claiming nothing
not disclosed in the earlier or parent applica-
tion, 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 con-
verted 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 divisional 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
amendment into the parent case.

A divisional application is also referred to as
a "division" of the parent case.

Rule 147. Separate application for invention not
elected. The nonelected inventions, those not elected
after a requirement for restriction (rule 142), may
be made the subjects of separate applications, which
must conform to the rules applicable to original appli-
cations and which will be examined in the same man-
ner as original applications. However, if such an ap-
plication is filed before the original application is pat-
ented or becomes abandoned, and if it is identical with
the original 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 applicant, signing and execution by the appli-
cant 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 amendment 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 "through error and without any de-
ceptive intention."

(b) On discovery of the mistake the party
filing the sole application must act with reason-
able 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.

## 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 continua-

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tion should not include anything which would
constitute 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.

For notation to be put on the file jacket by
the Examiner in the case of a continuation ap-
plication 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.

As is explained in 201.11 a "Substitute" does
not obtain the benefit of the filing date of the
prior application.

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 appli-
cation 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

Under certain circumstances an application
for patent is entitled to the benefit of the filing
date of a prior application of the same inventor.
The conditions are specified in 35 U. S. C. 120,
which contains a few variations over the prac-
tice prior to January 1, 1953, which was not
based upon any specific provision of the statute.

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 invention,
as though filed on the date of the prior application,
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:

1\. The second application (which is called a
continuing application) must be an application
for a patent for an invention which is also dis-
closed in the first application (the parent or
original application); the disclosure of inven-
tion in the first application (and obviously in
the second application as well) must be suffi-
cient to comply with the requirements of the
first paragraph of 35 U. S. C. 112.

2\. The second application must be "copend-
ing" with the first application.

3\. The second application must contain a
specific reference to the first application in the
specification or oath.

When these three conditions obtain, the sec-
ond application is entitled to have the same
effect as though filed on the same date that the
first application was filed, with respect to the
invention disclosed in both applications.

Copendency is defined in the statute in the
clause which requires that the second applica-
tion must be filed before (a) the patenting, or
(b) the abandonment of, or (c) the termination
of proceedings in the first application.

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# MANUAL OF PATENT EXAMINING PROCEDURE

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
before the patenting of 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
final 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," strictly
used, refers to abandonment for failure to
prosecute (Section 711.02) and express aban-
donment (Section 711.01). If an abandoned
application is revived by the Commissioner
(Section 711.03 (c) ), 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 prac-
tice. Proceedings in an application are obvi-
ously terminated when it is abandoned or when
a patent has been issued, and hence this expres-
sion is the broadest of the three. There are sev-
eral other situations in which proceedings are
terminated as is explained in Section 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 re-
ferred to as a continuing application. Con-
tinuing applications include those applications
which are called divisions, continuations, and
continuations-in-part. As far as the right un-
der the statute is concerned the name used is
immaterial, the names being merely expressions
developed for convenience. The statute is so
worded that the first application may contain
more than the second, or the second application
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.

The third requirement of the statute is that
the second application must contain a specific
reference to the first application. 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 reference
to the prior application in the later one. The
examiner cannot require the applicant to insert
a reference in the second application. If the

examiner is aware of the fact that an applica-
tion is a continuing application of a prior one,
he should merely call attention to this in an
Office action, for example, in the following lan-
guage:

"It is noted that this application appears to
claim subject matter disclosed in applicant's
prior copending application Serial No.
filed
A reference to this prior ap-
plication must be inserted in the specification
of the present application if applicant intends
to rely on the filing date of the prior appli-
cation, Rule 78."

The end of the first sentence of revised Rule
78 states that if the second application (and
by "application" is meant the specification and
oath) does not contain a reference to the prior
application, the prior application must be re-
ferred to in a separate paper filed in the later
application. This provision is merely for the
purpose of requiring the applicant to call the
examiner's attention to the fact that there was
a prior application. If the examiner is aware
of a prior application and notes it in an Office
action, as indicated above, the rule is satisfied
and the examiner 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, in which the oath refers back to a prior
application. Such reference to the prior appli-
cation satisfies the requirement of the statute.
If there is no reference in the specification, in
such cases, the examiner should require its
insertion or he may make the insertion by
Examiner's Amendment.

A second application which is not copending
with the first application, which includes those
called substitutes in sec. 201.09, is not entitled to
the benefit of the filing date of the prior appli-
cation and the bars to the grant of a patent
all date from the filing date of the second ap-
plication. An applicant is not now 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 sec-
ond 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 wrapper
in the case of continuing applications secs.
202.02 and 1302.09.

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201.13

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# 201.12 Assignment Carries Title

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.

# 201.13 Right of Priority of Foreign Application

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 the first para-
graph of 35 U. S. C. 119.

35\. U. S. C. 119. Benefit of earlier filing date in
foreign country ; right of 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 filled in this country
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 application in this
country, or which had been in public use or on sale
in this country more than one year prior to such filing.

The period of twelve months specified in this
section is six months in the case of designs, 35
U. S. C. 172.

The conditions 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 in the United States must
be filed within twelve months from the date
of the earliest foreign filing.

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

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 originated
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. This treaty has been re-
vised several times, the last revision being one
signed at London in 1934. One of the many
provisions of the treaty requires each of the ad-
hering countries to accord the right of priority
to the nationals of the other countries and the
first United States statute relating to this sub-
ject 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,
and a foreign country may also provide for this
right by reciprocal legislation." A list of the
countries, 52 in number, with respect to which
the right of priority is recognized is given in a
note following Rule 55 in the rule book.

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 Convention
relating to Inventions, Patents, Designs and Indus-
trial Models, signed at Buenos Aires August 20, 1910
(207 O. G. 935, 30 Stat. 1811), indicated by the letter
P after the name of the country; or reciprocal legis-
lation in the particular country, indicated by the letter
L following the name of the country. Australia (I),
Austria (I), Belgium (I), Brazil (I,P), Bulgaria (I),
Canada (1), Costa Rica (P), Cuba (I,P), Czechoslo-
vakia (I), Denmark (I), Dominican Republic (I,P).
Ecuador (P), Egypt (I), Finland (I), France (I),
Germany (I), Great Britain (I), Greece (I), Guate-
mala (P), Haiti (P), Honduras (P), Hungary (I),
Indonesia (I), Ireland (I), Israel (I), Italy (I),
Japan (I), Lebanon (I), Liechtenstein (I), Luxem-
burg (I), Mexico (I), Morocco, French Zone (I), Neth-
erlands (I), New Zealand (I), Nicaragua (P), Nor-
way (I), Panama (P), Paraguay (P), Philippines
(L), Poland (I), Portugal (I), Roumania (I), Spain
(I), Sweden (I), Switzerland (I), Syria (I), Tangier
Zone (I), Tunis (I), Turkey (I), Union of South
Africa (I). Uruguay (P), Yugoslavia (I).

If any applicant asserts the benefit of the filing
date of an application filed in a country not on
this list, the examiner should institute an in-

# 201.14

quiry 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.

The application in the foreign country may
have been filed by the assignee, or by the legal
representative or agent of the inventor which
is permitted in some foreign countries, rather
than by the inventor himself.

The United States application must be filed
within twelve months of the foreign filing. In
computing this twelve months, the first day is
not counted; thus, if an application was filed
in Canada on January 2, 1952, the U. S. appli-
cation may be filed on January 2, 1953. "The
Convention specifies in Article 4C (2) that "the
day of filing is not counted in this period."
(This is the usual method of computing periods,
for example the six months 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 Septem-
ber 6, 1952, the U. S. application is in time if
filed on September 8, 1953, since September 6,
1953 was a Sunday and September 7, 1953 was
a holiday. After January 1, 1953, the Patent
Office has not received applications on Satur-
days and, in view of 35 U. S. C. 21, and the
Convention which provides "If the last day of
the period is a legal holiday, or a day on which
the Patent Office is not open to receive appli-
cations in the country where protection is
claimed, the period shall be extended until the
next working day" (Article 4 C3), if the twelve
months expires on Saturday, the U. S. appli-
cation may be filed on the following Monday.

The twelve months is from the earliest for-
eign filing. If an inventor has filed an applica-
tion in France on January 2, 1952, and an ap-
plication in Great Britain 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 ap-
plication was filed more than twelve months
before the U. S. application, and he would not
be entitled to the benefit of the date of the
British application since this application is not
the first one filed.

The right to rely on the foreign filing extends
to overcoming the effects of intervening refer-
ences or uses, but there are certain restrictions.

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 publication, or was in
public use in this country, in November 1952, a
foreign application filed in January 1953, and a
U. S. application filed in December 1953, grant-
ing a patent on the U. S. application is barred
by the printed publication or public use occur-
ring more than one year prior to its actual
filing.

## 201.14 Right of Priority, Formal Re- quirements

Prior to January 1, 1953, the statute con-
tained no requirements for obtaining the right
of priority. This right existed in favor of any
applicant or patentee whenever the conditions
specified in the statute obtained, and the ap-
plicant was not required to do anything to ob-
tain it except when he wished to assert the
earlier date to overcome a reference or establish
a date in interference. Patents granted prior
to January 1, 1953 are still subject to the old
law in this respect. Under the new statute,
however, 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 thereafter
be asserted. The second paragraph of 35
U. S. C. 119 reads:

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 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 trans-
lation of the papers filed if not in the English language
and such other information as he deems necessary.

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 orig-
inal 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 applica-

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201.14

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tion. If the required papers are not filed with-
in the time limit set the right of priority is lost.
It should be particularly noted that these pa-
pers 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.

Before going into the procedure on the filing
of the papers, reference must be made to the re-
quirements of the oath. Rule 65, relating to
the oath, requires that the oath shall state
whether or not any application for patent on
the same invention has been filed in any foreign
country either by the applicant or by his legal
representatives or assigns; if any foreign ap-
plication has been filed the applicant must state
the country and the date of filing of the ear-
liest such application and he must also identify
every foreign application which was filed more
than twelve months before the filing of the ap-
plication in this country. If all foreign appli-
cations have been filed within twelve months of
the U. S. filing the applicant is required to re-
cite only the first such application and it should
be clear in the recitation that the foreign appli-
cation referred to is the first filed foreign appli-
cation. The requirements for reciting foreign
applications before January 1, 1953, included
more information than the present rule and
any oath following the requirements of the old
rule would still be acceptable.

(It may be pointed out here that a paragraph,
(d), of Rule 65 was canceled on January 1, 1953.
The statute referred to in this paragraph is
still in force with respect to barring the patent-
ing of certain inventions made by Germans or
Japanese but the former requirement in the
oath was omitted because of the fact that the
critical date of January 1, 1946, is now so old
that the recitation in the oath is no longer con-
sidered of any practical value.)

The requirements for recitation of foreign
applications in the oath, while serving other
purposes as well, are used in connection with
the right of priority.

The time for filing the papers required by the
statute is specified in the second paragraph
of Rule 55.

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 priority
need be in no special form and may be made by the
attorney or agent if the foreign application is referred

to in the oath as required by rule 65. The claim for
priority and the certified copy of the foreign applica-
tion specified in the second paragraph of 35 U. S. C.
119 must be filed in the case of interference when
specified in rules 216 and 224; when necessary to over-
come the date of a reference relied upon by the exam-
iner; or when specifically required by the examiner;
and in all other cases they must be filed not later
than the date the final 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 preceding 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 of the patent. The latest
time at which the papers may be filed is the date
of the payment of the final fee, except that,
under certain circumstances, they are required
at an earlier date. These circumstances are
specified in the rule as (1) in the case of inter-
ferences in which event the papers must be filed
within the time specified in the interference
rules, (2) when necessary to overcome the date
of a reference relied upon by the examiner, and
(3) when specifically required by the examiner.

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 oc-
casion to use the papers, which will be in the
majority of cases. In what follows in this sec-
tion it is assumed that no reference has been
cited which requires the priority date to be
overcome.

The main purpose in amending the statute
to require the filing of the papers mentioned
was to make the record of the file of the United
States patent complete. The Patent 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 the next sec-
tion (and also in cases of interferences).

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 at-
torney or agent at the time of transmitting the
certified copy if the foreign application is the
one referred to in the oath of the U. S. appli-
cation. 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 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 foreign
patent as issued does not comply since the ap-
plication as filed is required; however, a copy
of the printed specification and drawing of the
foreign patent is sufficient if the certification
indicates that it corresponds to the application
as filed.

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 and contain no
obvious formal defects. The subject matter of
the application is not examined to determine
whether the applicant is actually entitled to the
benefit of the foreign filing date on the basis of
the disclosure thereof.

When the papers under Section 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: "Receipt
is acknowledged on
of papers pur-
(date)

porting to comply with the requirements of
35 U. S. C. 119, which papers have been placed
of record in the file." The Examiner will write
the notation "Foreign application received" in
red ink on the face of the file wrapper at the
bottom adjacent to the country and date of
foreign filing, the data placed there by the
Application Branch.

If application is in interference when papers
under Section 119 are received see 1111.10.

If the certified copy filed does not correspond
to the application identified in the application
oath, or if the application oath does not refer
to the particular foreign application, the ap-
plicant has not complied with the requirements
of the rule relating to the oath. In such in-
stances the examiner's letter, after acknowledg-

ing receipt of the papers, should require the
applicant to explain the inconsistency and to
file a new oath stating correctly the facts con-
cerning foreign applications required by Rule
65. A letter in such cases may read :

"Receipt is acknowledged of the papers filed
September 18, 1953, claiming priority under
35 U. S. C. 119 based on an application filed in
Germany on February 17, 1950.

"The applicant has not complied with the
requirements of the rule relating to the oath
since the original application oath does not
acknowledge the filing of any foreign appli-
cations. The oath states that 'no application
for patent on this invention or discovery has
been filed by us or our representatives or as-
signs in any country foreign to the United
States.' If the German application is what it
purports to be in support of the claim for
priority, then the original oath contains an
erroneous statement.

"Applicant is required to explain this incon-
sistency and to file a new oath stating correctly
the facts required by the rule regarding foreign
filing."

Other situations requiring some action by the
examiner are exemplified by the following
sample letters.

A. Certified copy filed without a claim for
priority.

"Receipt is acknowledged of a certified copy,
filed September 18, 1953, of the Italian applica-
tion referred to in the oath. If this copy is be-
ing 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 required
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.

B. Foreign application filed more than a year
before filing of U. S. application.

"Receipt is acknowledged of the filing on
September 18, 1953, of a certified copy of the
French application referred to in the oath.

"It is not seen how a claim for priority can
be based on the application filed in France on
March 4, 1948, since the United States applica-
tion was filed more than one year thereafter.

"The certified copy, therefore, is herewith
returned."

C. British provisional specification filed
more than a year before U. S. application, but
British complete filed within the year.

"Receipt is acknowledged of papers filed on
September 18, 1953, purporting to comply with
the requirements of 35 U. S. C. 119.

(

C.
€

201.15

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"It is not seen how the claim for priority can
be based on the British application filed Janu-
ary 23, 1948, since the instant application was
filed more than one year thereafter; however,
the papers are left in the file."

D. Certified copy not the first filed foreign
application.

"Receipt is acknowledged of papers filed on
September 18, 1953, purporting to comply with
the requirements of 35 U. S. C. 119.

"In view of the fact that the subject matter
of the U. S. application was apparently first
presented in an application filed in Germany
on July 5, 1949, it is not seen how the claim for
priority can be based on the German applica-
tion filed May 8, 1950.

"Attention is directed to 35 U. S. C. 119,
which requires that the priority be based on
the first filed application for the same inven-
tion. The papers submitted, however, are left
in the file."

E. Claim of priority not accompanied by a
certified copy.

"Receipt is acknowledged of the paper filed
March 9, 1953, claiming priority based on an
application filed in France on November 16,
1948. It is noted, however, that applicant has
not filed a certified copy of the French applica-
tion 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 Supervisory Ex-
aminer.

The priority papers may be received while
the application is in issue. When the papers
are apparently regular in form and correspond
to the earliest foreign application recited in
the oath and this application is not too old, the
Issue Branch will enter the papers, acknowl-
edge their receipt, and make the notation on
the face of the file. In other cases the allowed
application, together with the papers, will be
forwarded to the examining division for con-
sideration and taking any appropriate action.
If foreign application papers are received after
the final fee has been paid, they will not be
entered in the file and the Issue Branch will
return them, advising the applicant that the
papers were received too late to be admitted.

Where the benefit of a foreign filing date is
claimed in a continuing application and a
certified copy has been received in the parent
case, it is not necessary to file an additional
certified copy in the later case. The applicant
when making the claim for priority may simply
call attention to the fact that the certified copy
is in the parent application.

If priority papers are filed in an interference,
it is not necessary to file an additional certified
copy in the application file. The interference
examiner will place them in the application file.

## 201.15 Right of Priority, Overcoming a Reference

The only time during ex parte prosecution
that the Examiner considers the merits of an
applicant's claim of priority is when a reference
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 con-
sidered 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, specifically require the foreign papers
to be filed in addition to repeating the rejec-
tion 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 foreign papers are not in the
English language. When the Examiner re-
quires 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 overcome 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, stat-
ing the reasons why the applicant is not con-
sidered entitled to the date. If it is determined
that he is entitled to the date, the rejection is
withdrawn 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 explanation. If the

papers are not in the English language and
there is no translation, the examiner 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.

If the named applicant in the foreign appli-
cation differs from the applicant in the U. S.
application, the examiner should refuse to
recognize the priority date until the matter
is taken care of, unless the priority papers show
that the inventor in the foreign application is
the same as the inventor in the U. S. application.

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 application.
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 ordinarily
entitled to any claims based on such foreign ap-
plication 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
function 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 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 disclo-
sure, reliance may then be had on the complete
specification and its date, if one has been pre-
sented, 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 fil-
ing date of this petition is the filing date of the
application in a particular country, the date ac-

corded 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 dif-
ferent foreign applications and may be entitled
to the filing date of one of them with respect
to certain claims and to the other with respect
to other claims.

## 201.16 Extension of Period of Prior- ity, Public Law 690

The twelve months period of priority is fixed
by statute and the Patent Office has no power
to extend it in any manner.

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,
and two supplementary acts, Public Law 220,
July 23, 1947 and Public Law 380, August 6,
1947, were subsequently enacted. These laws
were not included in the new Patent Code be-
cause of their temporary nature and remain
as independent enactments; they are reprinted
in the back of the Patent Law pamphlet.

The latest date on which an application could
have been filed in the United States and obtain
the benefit of an extension was February 29,
1948. Almost all of the applications affected
are now disposed of. Those still pending are
subject to the practice relating to them set forth
in 201.16 (a) to 201.16 (u) of the first edition
of the Manual, which sections are omitted from
the present edition because they will soon be
obsolete.

The Notice of December 17, 1952, stated :

"In connection with Boykin Act cases, examiners
are reminded that if an applicant claims the bene-
fit of the filing of an application in a country
not given in the list of countries in Section 201.16 (b)
of the first edition of the Manual, the application
must be called to the attention of the Supervisor
who will institute an inquiry concerning that par-
ticular country. Since the publication of the
Manual, Greece has been added to the list of coun-
tries. The final date in the case of Brazil may be
extended and any application asserting the benefit
of the filing of an application in Brazil later than
the date given in the Manual should be called to
the attention of the Supervisory Examiner."

If an application having a request under
Public Law 690 is to be put in interference see
secs. 1102.01 (a) and 1111.10.

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202.04

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# 201.17 Government Cases

The term "Act of 1883 application" was used
in referring to applications of government em-
ployees filed without fee under an act dated
March 3, 1883, which was amended April 30,
1928. This act is now 35 U. S. C. 266. Such
applications are not always owned by the gov-
ernment. 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

See Rule 78 (a) and Section 201.11.

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 appli-
cation, when given in the specification, must be
inserted by the Examiner on the left margin of the
file jacket in the case of a DIVISION, a CONTINU-
ATION, 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 no later than 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, when
the identifying data of the parent or prior ap-
plication is given in the specification the Ex-
aminer must stamp only the letter C-P. on the
file jacket.

These notations indicate to the Docket Clerk
when an application is a DIVISION, CONTINUA-
TION, CONTINUATION-IN-PART, or a SUBSTI-
TUTE. These four types of applications must be
sent to the Assignment Branch for a title search
when in condition for allowance even though there

is an earlier title search in the file. (Order No.
3411, Revised.) See 306 for work done by the
Assignment Branch pertaining to these particular
types of applications.

In those cases where the benefit of the filing
date of the parent application is not claimed
but where it is in fact otherwise a division,
continuation or continuation-in-part, the Exam-
iner should nevertheless refer the application
at the time of allowance to the Assignment
Branch for title search. A substitute applica-
tion in which the first application is not re-
ferred to should similarly be referred to the
Assignment Branch.

Only the letters C-P. (without data) are
placed on the file jacket in the case of a con-
tinuation-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 For- eign Application Is Acknowl- edged

When the applicant acknowledges a prior
foreign application in the oath the Application
Branch notes the country and date of filing of
the earliest foreign application mentioned, at
the bottom of the face of the file wrapper.
When satisfactory papers have been filed un-
der 35 U. S. C. 119, an additional notation is
made. See 201.14, twelfth and thirteenth
paragraphs.

Prior to November 1, 1953 the country and
date of the earliest foreign application were
printed in the heading of the patent in all cases.
After this date, this heading is printed only in
case the papers required for the right of pri-
ority have been filed, and the heading now
reads, "Claims priority, application (country)
(date)". In cases where there is some dis-
crepancy or ambiguity, the notation may be
omitted from the heading of the patent. If the
dates of several foreign filed applications are
claimed for different subject matter (sec. 201.15,
last paragraph) the date of only the earliest
such application is noted in the heading.

#### 202.04 In Oath

As will be noted by reference to 201.14, Rule
65 requires that the oath include certain in-
formation concerning applications filed in any
foreign country. If no applications for patent
have been filed in any foreign country, the oath
should so state.

# 202.05

## 202.05 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.

## 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 in-
clude 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 pay-
ment 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
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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