200

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

201.14 (a) Time for Filing Papers

201.14(b) Papers Required

201.14(c) Practice

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
Abandonment for Failure to Pay Issue Fee
(Forfeiture)

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 inventors upon fil-
ing a statement of the facts verified by all of the orig-
inal applicants, and an oath as required by rule 65
by the applicant who is the actual inventor, provided
the amendment is diligently made. Such amendment
must have the written consent of any assignee.

The required "statement of the facts verified
by all of the original applicants" must include
at the least, a recital of the circumstances, in-
cluding the relevant dates, of (1) the mis-
joinder and (2) the discovery of the mis-
joinder. Without such a showing of circum-
stances, no basis exists for a conclusion that
the application had been made in the names
of the original sole or joint applicant (s)
"through error and without any deceptive in-
tention", and no foundation is supplied for
a ruling that the amendment to remove the
names of those not inventors or include those
to be added as inventors was "diligently
made."

<!-- PageFooter="Rev. 7, Jan. 1966" -->

<!-- PageBreak -->

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

On the matter of diligence, attention is di-
rected to the decision of the C.C.P.A. in Van
Otteren v. Hafner et al., 757 O.G. 1026; 126
U.S.P.Q. 151.

It is possible to file a sole application to
take the place of the joint application, subject
to the requirements of Rule 45.

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 application
is now permitted by 35 U.S.C. 116.

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.
Such amendment must have the written consent of
any assignee.

Any attempt to effect a second conversion, of
either type or to effect both types of conversion,
in a given application, must be referred to the
appropriate Director. The provisions of Rule
312 apply to attempted conversions after allow-
ance and before issue. When any conversion
is effected, the file should be sent to the Appli-
cation Branch for a revision of its records.
Adding an inventor's name on the drawing is
done at applicant's request and expense. Can-
celling a name is ordinarily done without
charge.

## 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 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 or
"division". Except as provided in Rule 45,
both must be by the same applicant. (See be-

low.) 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.

However, a design application is not to be
considered to be a division of a utility applica-
tion, and is not entitled to the filing date thereof,
even though the drawings of the earlier filed
utility application show the same article as that
in the design application. In re Campbell, 1954
C.D. 191; 685 O.G. 470.

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. Compare
201.08 and 201.11.

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
application is filed before the patenting or abandon-
ment of or termination of proceedings on the original
application, and if the drawings are identical and the
application papers comprise a copy of the original
application as filed, prepared and certified by the
Patent Office, together with a proposed amendment
cancelling the irrelevant claims or other matter, sign-
ing and execution by the applicant may be omitted.

Since the language of Rule 147 "prepared and
certified" contemplates that the papers will not
leave the custody of this Office, the request for
the certified copy should be submitted to this
Office with the other pertinent parts, and if the
requirements under that Rule are fully met, the
application will be given a filing date of the
date on which the request and parts are received.
The "proposed amendment" should add to the
specification, "This is a division of application
Serial No.' __ , filed __ ", and should be the first
sentence of the specification except in certain
fee exempt applications (see 607.01) and design
applications (see 1503.01).

Note that execution and signing of the divi-
sional case may be omitted, under Rule 147,
only if restriction had been required as to the
claims originally filed. See In re Application
Papers of Kopf et al., 779 O.G. 290.

Since Rule 45 (second paragraph) permits
the conversion of a joint application to a sole,
it follows that a new application, restricted to
divisible subject matter, filed during the pend-
ency of the joint application by one of the
joint applicants, in place of restricting and
converting the joint case, may properly be

<!-- PageFooter="Rev. 7, Jan. 1966" -->

<!-- PageBreak -->

<!-- PageHeader="201.09" -->
<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

identified as a division of the joint application.
In like manner under Rule 45 (third para-
graph), a new joint application for divisible
subject matter present in a sole application
may be identified as a division if filed by the
sole applicant and another during the pendency
of the sole.

However, the following conditions must be
satisfied in each of the foregoing situations,

(a) It must appear that the parent appli-
cation was filed "through error and without
any deceptive intention".

(b) On discovery of the mistake the new
application must be diligently filed and the
burden of establishing good faith rests with
the new applicant or applicants.

(c) There must be filed in the new applica-
tion the verified statement of facts required
by Rule 45.

For notation to be put on the file jacket by
the Examiner in the case of a divisional ap-
plication see 202.02.

## 201.07 Continuation

A continuation is a second application for
the same invention claimed in a prior applica-
tion and filed before the original becomes
abandoned. Except as provided in Rule 45,
the applicant in the continuing application
must be the same as in the prior application.
The disclosure presented in the continuation
must be the same as that of the original appli-
cation, i.e., the continuation 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 re-
course to filing a continuation in order to in-
troduce 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.

## STREAMLINED CONTINUATION

If the drawings and specification of a new
application are to be identical with those of a
pending application of the same applicant, and
if the claims are to be directed to the same in-
vention as that prosecuted in the pending ap-
plication, the application papers of the earlier
case, excepting the claims but including the
drawing, may be used in the new case. A re-
quest for the use of such papers must be made
and such request will be considered a waiver of
the right to further prosecution of the earlier
application and will terminate proceedings
therein as of the filing date accorded the new
application. The filing fee will be that appro-

priate to all the claims to be included in the new
case. The entire file wrapper contents of the
earlier application will be included in the file
of the new one but the Office actions in the
former will not be regarded as actions in the
latter and the prosecution of the new applica-
tion will be conducted in the same manner as if
new application papers had been filed. A new
serial number and filing date will be accorded
but the effective filing date will be that of the
earlier application. (Basis: Commissioner's
Memorandum, February 11, 1966; 824 O.G. 1.)

A suggested format for transmitting a new
set of claims and requesting the use of the con-
tents of an earlier filed application for a con-
tinuation application in compliance with 824
O.G. 1 is set forth in the notice of May 31, 1966
(828 O.G. 1085).

The streamlined continuation application
procedure may not be used when the original
application has been allowed and the issue fee
has been paid prior to the filing of the
continuation application. (Basis: Notice of
May 13, 1966, 827 O.G. 2.)

## 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 ap-
plication (201.06). Subject to the same con-
ditions, a joint continuation-in-part application
may derive from an earlier sole application.

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 desig-
nate an application which is in essence the
duplicate of an application by the same appli-
cant abandoned before the filing of the later
case, finds official recognition in the decision,
Ex parte Komenak, 1940 C.D. 1; 512 O.G. 739.
However, the decision does not reflect current
practice as to compelling applicant to insert,
in the specification, reference to the earlier
case. The notation on the file wrapper (See
202.02) that one case is a "Substitute" for an-
other is printed in the heading of the patent
copies. See 201.11.

<!-- PageFooter="Rev. 10, Oct. 1966" -->

<!-- PageBreak -->

## 201.10

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

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

## 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 Ex-
aminer 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 "substi-
tute" will result in the further endorsement by
the Assignment Branch of any assignment of
the parent case that may have been made.

1

## 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 inven-
tor. The conditions are specified in 35 U.S.C.
120, which contains a few variations over the
practice 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 inven-
tion, as though filed on the date of the prior applica-
tion, 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 in addition to the
basic requirement that the two applications
be by the same inventor :

1\. The second application (which is called a
continuing application) must be an application
for a patent for an invention which is also
disclosed 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.

The term "same inventor" has been construed
in In re Schmidt, 1961 C.D. 542; 772 O.G. 897,
to include a continuing application of a sole
inventor derived from an application of joint
inventors where a showing was made that the
joinder involved error without any deceptive
intent (35 U.S.C. 116).

### COPENDENCY

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

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 on the same day or before the patenting
of the first application. Thus, the second ap-
plication 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
practice. Proceedings in an application are
obviously terminated when it is abandoned or
when a patent has been issued, and hence this
expression is the broadest of the three. There
are several other situations in which proceed-
ings 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 referred to as a continuing application.
Continuing applications include those applica-

(

<!-- PageFooter="Rev. 10, Oct. 1966" -->

<!-- PageBreak -->

<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->
<!-- PageHeader="201.11" -->

tions which are called divisions, continuations,
and continuations-in-part. As far as the right
under the statute is concerned the name used
is immaterial, the names being merely expres-
sions 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 en-
titled to the benefit of the filing date of the
first as to the common subject matter.

# REFERENCE TO FIRST APPLICATION

The third requirement of the statute is that
the second (or subsequent) application must
contain a specific reference to the first applica-
tion. This should appear as the first sentence
of the specification following the title and
abstract. In the case of design applications,
it should appear as set forth in 1503.01.
In view of this requirement, the right to rely
on a prior application may be waived or re-
fused by an applicant by refraining from in-

serting 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 application is a continuing applica-
tion of a prior one, he should merely call atten-
tion to this in an Office action, for example, in
the following language :

"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 applica-
tion, Rule 78."

In Rule 147 (certified copy) divisional cases,
applicant should include directions to enter
"This is a division of application Serial No.

filed
" as the first sen-
tence of the specification in the amendment can-
celling the nonelected claims.

The end of the first sentence of revised Rule
78 states that if the second application (and

<!-- PageFooter="Rev. 10, Oct. 1966" -->

<!-- PageBreak -->

<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

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 di-
vision, 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 ap-
plication 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
second application will show this fact. In the
case of a "Substitute" application, the notation
on the file wrapper is printed in the heading
of the patent copies and thus calls attention
to the relationship of the two cases.

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 wrap-
per in the case of continuing applications see
202.02 and 1302.09.

WHEN NOT ENTITLED TO FILING DATE

Where the first application is found to be
fatally defective because of insufficient disclo-
sure to support allowable claims, a second appli-
cation filed as a "continuation-in-part" of the
first application to supply the deficiency is not
entitled to the benefit of the filing date of the
first application. Hunt Co. v. Mallinckrodt
Chemical Works, 83 U.S.P.Q. 277 at 281 and
cases cited therein. Ex parte Buc et al., 1957
C.D. 40; 722 O.G. 433. These cases also in-
volve the question of res judicata.

# 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 filling 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 filed in this coun-
try 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 appli-
cation 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 in a "recognized"
country as explained below.

<!-- PageBreak -->

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

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

## RECOGNIZED COUNTRIES OF FOREIGN FILING

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 origi-
nated 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
revised several times, the last revision being
one signed at London in 1934. One of the
many provisions of the treaty requires each of
the adhering countries to accord the right of
priority to the nationals of the other countries
and the first United States statute relating to
this subject was enacted to carry out this obli-
gation. There is another treaty between the
United States and some Latin American coun-
tries which also provides for the right of
priority, and a foreign country may also pro-
vide for this right by reciprocal legislation. A
list of the countries, over fifty in number, with
respect to which the right of priority is recog-
nized 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 Con-
vention relating to Inventions, Patents, De-
signs and Industrial Models. signed at Buenos
Aires August 20, 1910 (207 O.G. 935, 38 Stat.
1811), indicated by the letter P after the name
of the country; or reciprocal legislation in the
particular country, indicated by the letter L
following the name of the country. Algeria
(I), Australia (I), Austria (I), Belgium (I),
Brazil (I, P), Bulgaria (I), Cameroon (I),
Canada (I), Central African Republic (I),
Ceylon (I), Chad, Republic of (I), Congo, Re-
public of (I), Costa Rica (P), Cuba (I, P),
Cyprus (I), Czechoslovakia (I), Denmark (I),
Dominican Republic (I, P), Ecuador (P),
Egypt (United Arab Republic) (I), Finland
(I), France (I), Gabon (I), Germany, Federal
Republic of (I), Great Britain (I), Greece (I),
Guatemala (P), Haiti (P), Honduras (P),
Hungary (I), Iceland (I), Indonesia (I),
Iran (I), Ireland (I), Israel (I), Italy (I),
Ivory Coast, Republic of (I), Japan (I), Kenya
(I), Korea (L), Laos, Kingdom of (I),

Lebanon (I), Liechenstein (I), Luxemburg
(I), Malagasy, Republic of (I), Malawi (I),
Mauritania (I), Mexico (I), Monaco
(I),
Morocco (I), Netherlands (I), New Zealand
(I), Nicaragua (P), Niger (I), Nigeria, Fed-
eration of (I), Norway (I), Panama (P),
Paraguay (P), Philippines (I), Poland (I),
Portugal (I), Rhodesia and Nyasaland, Fed-
eration of (I), Roumania (I), San Marino (I),
Senegal, Republic of (I), Southern Rhodesia
(I), Spain (I), Sweden (I), Switzerland (I),
Syria (United Arab Republic) (I), Tangan-
yika (I), Trinidad and Tobago (I), Tunis
(I), Turkey (I), Union of South Africa (I),
U.S.S.R. (I), United Arab Republic (I), Upper
Volta, Republic of (I), Uganda (I), Uruguay
(P), Vatican City (I), Vietnam (I), Yugo-
slavia (I), Zambia (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 inquire 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.

# IDENTITY OF INVENTORS

The inventors of the U.S. application and of
the foreign application must be the same, for a
right of priority does not exist in the case of
an application of inventor A in the foreign
country and inventor B in the United States,
even though the two applications may be
owned by the same party. However the appli-
cation in the foreign country may have been
filed by the assignee, or by the legal represent-
ative or agent of the inventor which is per-
mitted in some foreign countries, rather than
by the inventor himself, but in such cases the
name of the inventor is usually given in the
foreign application on a paper filed therein. An
indication of the identity of inventors made in
the oath or declaration accompanying the U.S.
application by identifying the foreign applica-
tion and stating that the foreign application
had been filed by
on be-
half of the inventor is acceptable.

# TIME FOR FILING U.S. APPLICATION

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 4℃ (2) that
"the day of filing is not counted in this
period." (This is the usual method of comput-
ing periods, for example the six months for

Rev. 10, Oct. 1966

<!-- PageBreak -->

<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

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 September 6, 1952, the U.S. application is
in time if filed on September 8, 1953, since

September 6, 1953 was a Sunday and Septem-
ber 7, 1953 was a holiday. After January 1,
1953, the Patent Office has not received appli-
cations on Saturdays 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 applications in the country where pro-

<!-- PageFooter="Rev. 10, Oct. 1966" -->

<!-- PageBreak -->

201.14

<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

tection is claimed, the period shall be extended
until the next working day" (Article 4C3), if
the twelve months expires on Saturday, the
U.S. application may be filed on the following
Monday.

# FIRST FOREIGN APPLICATION

The twelve months is from the earliest for-
eign filing. If an inventor has filed an appli-
cation in France on January 2, 1952, and an
application in Great Britain on March 3, 1952,
and then files in the United States on Febru-
ary 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 application 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 appli-
cation is not the first one filed. If the first
foreign application was filed in a country
which is not recognized with respect to the
right of priority, it is disregarded for this
purpose.

Public Law 87-333 extended the right of
priority to "subsequent" foreign applications if
one earlier filed had been withdrawn, aban-
doned or otherwise disposed of, under certain
conditions and for certain countries only.

Great Britain and a few other countries have
a system of "post-dating" whereby the filing
date of an application is changed to a later date.
This "post-dating" of the filing date of the ap-
plication does not affect the status of the appli-
cation with respect to the right of priority; if
the original filing date is more than one year
prior to the U.S. filing no right of priority can
be based upon the application.

If an inventor has filed two foreign applica-
tions in recognized countries, one outside the
year and one within the year, and the later
application discloses additional subject matter,
a claim in the U.S. application specifically
limited to the additional disclosure would be
entitled to the date of the second foreign ap-
plication since this would be the first foreign
application for that subject matter.

# EFFECT OF RIGHT OF PRIORITY

The right to rely on the foreign filing ex-
tends to overcoming the effects of intervening
references or uses, but there are certain re-
strictions. For example 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 pub-
lication, 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, granting a patent on the
U.S. application is barred by the printed pub-
lication or public use occurring more than one
year prior to its actual filing in the U.S.

The right of priority can be based upon an
application in a foreign country for a so-called
"utility model," called Gebrauchmuster in Ger-
many.

## 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 estab-
lish 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 there-
after 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 coun-
try. 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 translation 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
original 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 appli-
cation. If the required papers are not filed
within the time limit set the right of priority
is lost. Delay in making the claim and filing
the papers was held not to be a basis for a

<!-- PageFooter="Rev. 1, Jan. 1964" -->

<!-- PageBreak -->

201.14(a)

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

reissue. Ex parte Arkless, 1958 C.D. 19; 726
O.G. 635.

It should be particularly noted that these
papers 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
requirements 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 for-
eign country either by the applicant or by his
legal representatives or assigns; if any foreign
application has been filed the applicant must
state the country and the date of filing of the
earliest such application and he must also
identify every foreign application which was
filed more than twelve months before the filing
of the application in this country. If all for-
eign applications have been filed within twelve
months of the U.S. filing the applicant is re-
quired to recite only the first such application
and it should be clear in the recitation that the
foreign application referred to is the first filed
foreign application. The requirements for re-
citing foreign applications before January 1,
1953, included more information than the pres-
ent rule and any oath following the require-
ments of the old rule would still be acceptable.

(It may be pointed out here that a para-
graph, (d), of Rule 65 was canceled on Janu-
ary 1, 1953. The statute referred to in this
paragraph is still in force with respect to
barring the patenting 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 insisted upon unless the ap-
plicant is claiming priority under P.L. 619.)

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.

# 201.14(a) Right of Priority, Time for Filing Papers

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 condi-
tions 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 re-
ferred to in the oath as required by rule 65. The
claim for priority and the certified copy of the for-
eign application 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 overcome the date of a reference relied upon by the
examiner ; or when specifically required by the exam-
iner, and in all other cases they must be filed not
later than the date the final fee is paid. If the pa-
pers filled are not in the English language, a transla-
tion 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 re-
quired at an earlier date. These circumstances
are specified in the rule as (1) in the case of
interferences in which event the papers must
be filed within the time specified in the inter-
ference rules, (2) when necessary to overcome
the date of a reference relied upon by the exam-
iner, and (3) when specifically required by the
examiner.

Although Rule 55 permits the filing of pri-
ority papers up to and including the date for
payment of the final fee, it is advisable that
such papers be filed as soon as a claim is in-
dicated to be allowable. Frequently, priority
papers are found to be deficient in material
respects, such as, for example, the failure to
include the correct certified copy, and there is
not sufficient time to remedy the defect. Occa-
sionally, a new oath may be necessary where
the original oath omits the reference to the
foreign filing date for which the benefit is
claimed. The early filing of priority papers
would thus be advantageous to applicants in
that it would afford time to explain any in-
consistencies that exist or to supply any addi-
tional documents that may be necessary.

# 201.14(b) Rights of Priority, Papers Required

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 deter-
mine 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

<!-- PageFooter="Rev. 1, Jan. 1964" -->

<!-- PageBreak -->

<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->
<!-- PageHeader="201.14(b)" -->

in the next section (and also in cases of inter-
ferences).

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

<!-- PageFooter="Rev. 1, Jan. 1964" -->

<!-- PageBreak -->

<!-- PageHeader="201.14(c)" -->
<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

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 for-
eign patent as issued does not comply since the
application as filed is required; however, a
copy of the printed specification and drawing
of the foreign patent is sufficient if the certifi-
cation indicates that it corresponds to the ap-
plication 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.

## DURING INTERFERENCE

If priority papers are filed in an interfer-
ence, it is not necessary to file an additional
certified copy in the application file. The in-
terference examiner will place them in the ap-
plication file.

## CONTINUING APPLICATIONS, REISSUES

Where the benefit of a foreign filing date is
claimed in a continuing application or in a re-
issue 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.

# 201.14(c) Right of Priority, Practice

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

# No IRREGULARITIES

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:

A. "Receipt is acknowledged of papers sub-
mitted under 35 U.S.C. 119, which papers have
been placed of record in the file."

The Examiner will enter the information
specified in Section 202.03 on the face of the file
wrapper.

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

# PAPERS INCONSISTENT

If the certified copy filed does not corre-
spond to the application identified in the ap-
plication oath, or if the application oath does
not refer to the particular foreign application,
the applicant has not complied with the re-
quirements of the rule relating to the oath. In
such instances the examiner's letter, after
acknowledging receipt of the papers, should
require the applicant to explain the incon-
sistency and to file a new oath stating correctly
the facts concerning foreign applications re-
quired by Rule 65. A letter in such cases may
read -:

B. "Receipt is acknowledged of the papers
filed September 18, 1953, claiming priority un-
der 35 U.S.C. 119 based on an application filed
in Italy 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 Italian application is what it
purports to be in support of the claim for
priority, then the original oath contains an
erroneous statement.

<!-- PageFooter="Rev. 2, Nov. 1964" -->

<!-- PageBreak -->

# 201.14(c)

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

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

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

# NO CLAIM FOR PRIORITY

C. "Receipt is acknowledged of a certified
copy, filed September 18, 1953, of the Italian
application referred to in the oath. If this
copy is being filed to obtain the benefits of the
foreign filing date under 35 U.S.C. 119, appli-
cant 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.

## FOREIGN APPLICATIONS ALL MORE THAN A YEAR BEFORE U.S. FILING

D. "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 is herewith returned."

# SOME FOREIGN APPLICATIONS MORE THAN A YEAR BEFORE U.S. FILING

For example, British provisional specifica-
tion filed more than a year before U.S. appli-
cation, but British complete filed within the
year, and certified copies of both submitted.

E

E. "Receipt is acknowledged of papers filed
on September 18, 1953, purporting to comply
with the requirements of 35 U.S.C. 119. It is
not seen how the claim for priority can be
based on the British specification filed January
23, 1948, because the instant application was
filed more than one year thereafter. However,
the printed heading of the patent will note the
claimed priority date based on the complete
specification; i.e., November 1, 1948, for such
subject matter as was not disclosed in the pro-
visional specification."

# CERTIFIED COPY NOT THE FIRST FILED FOREIGN APPLICATION

F. "Receipt is acknowledged of papers filed
on
(date)
purporting to comply with

the requirements of 35 U.S.C. 119 and they
have been placed of record in the file.

Attention is directed to the fact that the date
for which priority is claimed is not the date
of the first filed foreign application acknowl-
edged in the oath. However, the priority date
claimed which will appear in the printed head-
ing of the patent will be
"

(date claimed)

# NO CERTIFIED COPY

G. "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 appli-
cation 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.

# APPLICATION IN ISSUE

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 be
left in the file and the applicant notified by
the Issue Branch that the papers were re-
ceived too late to be admitted.

# RETURN OF PAPERS

It is sometimes necessary for the Examiner
to return papers filed under 35 U.S.C. 119
either upon request of the applicant or because
they fail to meet a basic requirement of the
statute, e.g., all foreign applications were filed
more than a year prior to the U.S. filing date.

Where the papers have not been entered in
the file, it is not necessary to secure approval
of the Commissioner for their return but they
should be sent to the Office of the Director,
Patent Examining Operation for cancellation
of the Office stamps. "Where the papers have
been entered in the file, a request for permission
to return the papers should be addressed to the
Commissioner of Patents and forwarded to the
Director, Patent Examining Operation for
approval.

<!-- PageBreak -->

<!-- PageHeader="201.15" -->
<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

## 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 refer-
ence 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 considered 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, spe-
cifically require the foreign papers to be filed
in addition to repeating the rejection 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 for-
eign papers are not in the English language.
When the Examiner requires 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 over-
come 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, stating the rea-
sons why the applicant is not considered en-
titled to the date. If it is determined that he
is entitled to the date, the rejection is with-
drawn 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 explana-
tion. If the papers are not in the English
language and there is no translation, the ex-
aminer 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.

The foreign application may have been filed
by the assignee or legal representative or agent
of the inventor, in his or its own name as appli-
cant. In such cases, if the certified copy of the
foreign application corresponds with the one
identified in the oath as required by Rule 65
and no discrepancies appear, it may be assumed
that the inventors are the same. If there is dis-
agreement as to inventors on the certified copy,
the priority date should be refused until the
inconsistency or disagreement is eliminated.

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 ordi-
narily entitled to any claims based on such
foreign application 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 func-
tion of the British provisional specification is
decribed in an article in the Journal of the
Patent Office Society of 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 disclosure,
reliance may then be had on the complete speci-
fication and its date, if one has been presented,
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
filing date of this petition is the filing date of
the application in a particular country, the date
accorded 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

<!-- PageFooter="Rev. 1, Jan. 1964" -->

<!-- PageBreak -->

<!-- PageHeader="201.16" -->
<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

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.
Public Law 220, July 23, 1947, Public Law 380,
August 6, 1947, and Public Law 619, November
16, 1954, supplement the original enactment.
These laws are reprinted in the back of the
Patent Law pamphlet.

### 201.17 Government Cases

The term "Act of 1883 application" was
used in referring to applications of govern-
ment employees 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
government. Other applications, not inven-
tions of government employees, may be as-
signed to and owned by the government. See
607.01.

### 202 Cross-Noting

#### 202.01 In Specification

See Rule 78(a), Rule 79 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
reference 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
application, when given in the specification
must be inserted by the Examiner on the file
jacket in the case of a DIVISION, a CON-
TINUATION and, whether given in the speci-
fication or not, in the case of a SUBSTITUTE
Application. This or the notation "None" is to
be filled in no later than the first action. 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 or a division of a continuation the data
of all cases involved should be given. In the
case of a continuation-in-part, when the iden-
tifying data of the parent case is given in the
specification, the serial number and filing date
must be inserted by the Examiner in the box
provided on the face of the file wrapper.
When an application is a continuation-in-part
of two or more distinct applications, each ap-
plication shall be noted on the face of the file.
When an application is a continuation-in-part
of a continuation-in-part, only the immediate
parent application will be noted on the face of
the file. (Basis: Order No. - 1832, Order No.
3411 and Notice of January 23, 1964.)

<!-- PageFooter="Rev. 10, Oct. 1966" -->

<!-- PageBreak -->

<!-- PageHeader="203.04" -->
<!-- PageHeader="TYPES, CROSS-NOTING, AND STATUS OF APPLICATION" -->

See 306 for work done by the Assignment
Branch pertaining to these particular types of
applications.

In the unlikely situation that there has been
no reference to a parent application because
the benefit of its filing date is not desired,
no notation as to the parent case is made on
the face of the file wrapper; however, if the
later application is in fact otherwise a divi-
sion, continuation or continuation-in-part, the
Examiner should nevertheless refer the appli-
cation at the time of allowance to the Assign-
ment Branch for title search.

##### 202.03 On File Wrapper When Prior- ity Is Claimed for Foreign Ap- plication

At the time indicated in Section 201.14(c),
the Examiner will write certain information
concerning the foreign application on the basis
of which priority is claimed on the face of the
file wrapper in the spaces which appear under
the heading "Claims Foreign Priority."

The information to be written in on the face
of the file consists of the country (beneath the
word Country), the filing date (beneath the
word Date and along the same line), and the
application number with the word "App." be-
neath these two items and in the same box, of the
foreign application referred to in the first para-
graph. The application number may be omitted
in those instances in which it cannot be deter-
mined, but in such cases the word "App." fol-
lowed by a dash should nevertheless be written
in. In some instances (mostly cases from Bel-
gium, some from France, and a few others) the
priority papers clearly show that the patent has
issued and give its number and in such cases
the patent number should also be used; the word
"Patent" followed by the patent number is to
be written in to the right of the application
number if there is room or below the applica-
tion number.

If the dates of several foreign applications
are claimed (see 201.15, last paragraph) and
satisfactory papers have been received for each,
information respecting each of the foreign ap-
plications is to be entered on the face of the file
wrapper. The data of the second foreign ap-
plication is written in the box below the first.

The heading of the printed specification of
the patent when it is issued, and the listing in
the Official Gazette, will refer to the claim of
priority, giving the country, the filing date, and.
the number of the application (and the patent
number in some instances) in those cases in
which the face of the file has been endorsed.

In the case of designs, only the country and
filing date are to be used.

# 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 In Case of Reissues

Rule 179 requires that a notice be placed in
the file of an original patent for which an ap-
plication 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
amendment filed prior to the first Office Action
does not alter the status of a "new" applica-
tion.

## 203.02 Rejected

An application which, during its prosecution
in the examining division and before allow-
ance, 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
response 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
response 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 issue fee. Its status as an "al-
lowed" case continues from the date of allow-
ance until it is withdrawn from issue or until
it issues as a patent or becomes abandoned, as
provided in Rule 316. See 712.

The files of allowed cases are kept in the
Issue and Gazette Branch, arranged numeri-
cally by serial number.

<!-- PageFooter="Rev. 7, Jan. 1966" -->

<!-- PageBreak -->

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

# 203.05 Abandoned

An abandoned application is, inter alia, one
which is removed from the Office docket of
pending 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
prosecution of the case. (711 to 711.02(b),
712)

# 203.06 Incomplete

An application lacking some of the essential
parts and not accepted for filing is termed an
incomplete application. (506 and 506.1)

# 203.07 Abandonment for Failure to Pay Issue Fee (Forfeiture)

An allowed application in which the issue fee
(or that portion specified in the Notice of AI-
lowance) is not paid within three months after
the Notice of Allowance is abandoned for that
reason. The issue fee may however be accepted
by the Commissioner within a further period of
three months on a showing, in which case the
patent will issue as though no abandonment
had occurred.

With respect to applications in which the
Notice of Allowance was mailed prior to Octo-
ber 25, 1965, the period for payment of the issue
(final) fee is six months and the period in
which the fee may be accepted late is one year.

An application which has become abandoned
by reason of failure to pay the issue (final) fee
was formerly referred to as a forfeited appli-
cation. See Rule 316 in 712.

# 203.08 Examiners To Answer "Status Letters"

:

Inquiries as to the status of applications, by
persons 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 groups for direct
action. Such letters will be stamped "Status
Letters."

If the correspondent is not entitled to the
information, in view of Rule 14, he should be
so informed.

If the inquiry is directed to an application
awaiting action by the Office, a prediction
should be made of the probable date of reach-
ing the case for action. The clerical force will
stamp status letters with a stamp provided in
each group and submit them to the Examiner
having jurisdiction of the application who will
fill in the blanks. The original letter of inquiry
should be returned to the correspondent to-
gether with the reply. The reply to an inquiry
which includes a self-addressed, postage-paid
postcard should be made on the postcard with-
out placing it in an envelope. Such reply does
not count as an action in the case. This predic-
tion of a date is not to be considered as binding
upon the Examiner in making his next action.

In cases of allowed applications, a memoran-
dum should be pinned to the inquiry with a
statement of date of notice of allowance, and
transmitted to the Issue Branch for its appro-
priate action. This Branch will notify the in-
quirer of the date of the notice of allowance
and the status of the application 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 record. The inquiry should be an-
swered by the examiner, however, and in a
manner consistent with the provisions of Rule
14. (Basis: Notices of June 22, 1921, and May
6, 1948.)

Inquiries from Members of Congress con-
cerning the status of pending applications
should not be answered by the examiner but
should be referred promptly to the Commis-
sioner's Office for answer with a report as to
when a particular case will be reached for
further action on the part of the office. (Basis:
Notice of September 24, 1956.)

Another type of inquiry is to be distinguished
from ordinary status letters. When a U.S. ap-
plication is referred to in a foreign patent (for
priority purposes, for example), inquiries as to
the status of said application (abandoned,
pending, patented) should be forwarded to the
Application Branch.

<!-- PageFooter="Rev. 9, Jul. 1966" -->