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# Chapter 200 Types, Cross-Noting, and Status of Application

201.

Types of Applications

202.04

Foreign Patent Granted after Date of Speci-

201.01

Sole

fication

201.02

Joint

202.05

In Oath

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

201.10

Refile

203.06

Incomplete

201.11

Continuity between Applications: When En-

203.07

Forfeited

titled to Filing Date

203.08

"Status Letters"

201.12

Assignment Carries Title

201.13

International Convention for the Protection of

201

Types of Applications

Industrial Property

Patent applications fall into three broad

201.14

Proving of Foreign Filing for "Normal" Pri-

types,

viz., applications for "mechanical", de-

ority

sign,

and plant patents. The term "mechani-

201.15

Examiner's Determination of Foreign Filing

cal",

as here employed, embraces all applications

201.16

Public Law 690

and

patents which are directed to a "new and

201.16

(a)

Time Limits for Obtaining Benefit of Law

useful

art, machine, manufacture, or composi-

201.16

(b)

Counties Granting Reciprocity

tion

of matter, or to any new and useful im-

201.16

(c)

Allegation as to Citizenship in Reciprocat-

provement thereof." The specialized procedure

ing Country

which

pertains to the examination of applica-

201.16

(d)

Proof of Contents of Foreign Application

tions

for design and plant patents will be treated

201.16

(e)

Effect on Term of Patent

detail in Chapters 1500 and 1600, respectively.

201.16

(f)

When No Papers Have Been Filed

201.16(g)

Actions Must Be Responded to

201.01

Sole

201.16

(h)

Requirements of the Statute

application wherein the invention

201.16(i)

The Request in Writing

is pre- a

201.16(j)

Certified Copy of Foreign Application

sented

as that of a single person is termed

:201.16(k)

Sworn Translation

sole

application.

201.16(I)

Affidavit of Inventor

201.02

Joint

201.16

(m)

Examiner Must Determine Right to Rely on Foreign Application

joint application is one in which two or

201.16

(n)

Action by Examiner

persons have taken oath that they are the

201.16(o)

Examiner's Letter

joint

inventors of the claimed subject matter.

201.16(p)

Date Refused or Granted

201.16

(q)

Allowed Applications

201.03

Convertibility From a Joint to

201.16(r)

Applications on Appeal

a Sole Application

201.16(s)

Applications in Interference

Rule

45 (Second Paragraph) Joint Inventors. (b)

201.16(t)

Application Oath

If an

application for patent has been made inadvert-

201.16(u)

Submission of Cases to Supervisory

ently

or by mistake and without fraudulent intention

Examiner

by two

or more persons as joint inventors when they

201.17

Fee Exempt, Government-Owned.

were

not in fact joint inventors, the application may be

202

Cross-Noting

amended

to remove the names of those not inventors

202.01

Specification

upon

filing a statement of the facts verified by all of

202.02

File Wrapper of Division, Continuation,

the

original applicants, and an oath as required by rule

Substitute, or Continuation-in-part

65 by

the applicant who is the actual inventor, provided

202.03

File Wrapper when Foreign Application is

the

amendment is diligently made. An application can

Acknowledged

not be

amended to add the name of a joint inventor who

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.

Rule 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-

(

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

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

(

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 applications

for in

filing 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

201.16 (e)

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;

(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.

## 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

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.

(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 18. 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 1302.06.

## 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

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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