Chapter    200  Types, Cross-Noting, and Status of Application
---SECTION---201 Types of Applications

35 U.S.C. 111 Application.

(a) IN GENERAL.-

(1) WRITTEN APPLICATION.-An application for patent shall be made, or
authorized to be made, by the inventor, except as otherwise provided in
this title, in writing to the Commissioner.

(2) CONTENTS.-Such application shall include-

(A) a specification as prescribed by section 112 of this title;

(B) a drawing as prescribed by section 113 of this title; and

(C) an oath by the applicant as prescribed by section 115 	of this
title.

(3) FEE AND OATH.-The application must be accompanied by the fee
required by law. The fee and oath may be submitted after the
specification and any required drawing are submitted, within such period
and under such conditions, including the payment of a surcharge, as may
be prescribed by the Commissioner.

(4) FAILURE TO SUBMIT.-Upon failure to submit the fee and oath within
such prescribed period, the application shall be regarded as abandoned,
unless it is shown to the satisfaction of the Commissioner that the
delay in submitting the fee and oath was unavoidable or unintentional.
The filing date of an application shall be the date on which the
specification and any required drawing are received in the Patent and
Trademark Office.

(b) PROVISIONAL APPLICATION.-

(1) AUTHORIZATION.-A provisional application for patent shall be made or
authorized to be made by the inventor, except as otherwise provided in
this title, in writing to the Commissioner. Such application shall
include-

(A) a specification as prescribed by the first paragraph of section 112
of this title; and

(B) a drawing as prescribed by section 113 of this title.

(2) CLAIM.-A claim, as required by the second through fifth paragraphs
of section 112, shall not be required in a provisional application.

(3) FEE.-(A) The application must be accompanied by the fee required by
law.

(B) The fee may be submitted after the specification and any required
drawing are submitted, within such period and under such conditions,
including the payment of a surcharge, as may be prescribed by the
Commissioner.

(C) Upon failure to submit the fee within such prescribed period, the
application shall be regarded as abandoned, unless it is shown to the
satisfaction of the Commissioner that the delay in submitting the fee
was unavoidable or unintentional.

(4) FILING DATE.-The filing date of a provisional application shall be
the date on which the specification and any required drawing are
received in the Patent and Trademark Office.

(5) ABANDONMENT.-The provisional application shall be regarded as
abandoned 12 months after the filing date of such application and shall
not be subject to revival thereafter.

(6) OTHER BASIS FOR PROVISIONAL APPLICATION.-Subject to all the
conditions in this subsection and section 119(e) of this title, and as
prescribed by the Commissioner, an application for patent filed under
subsection (a) may be treated as a provisional application for patent.

(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.-A
provisional application shall not be entitled to the right of priority
of any other application under section 119 or 365(a) of this title or to
the benefit of an earlier filing date in the United States under section
120, 121, or 365(c) of this title.

(8) APPLICABLE PROVISIONS.-The provisions of this title relating to
applications for patent shall apply to provisional applications for
patent, except as otherwise provided, and except that provisional
applications for patent shall not be subject to sections 115, 131, 135,
and 157 of this title.

37 CFR 1.9 Definitions.

(a)(1) A national application as used in this chapter means a U.S.
application for patent which was either filed in the Office under 35
U.S.C. 111, or which entered the national stage from an international
application after compliance with 35 U.S.C. 371.

(2) A provisional application as used in this chapter means a U.S.
national application for patent filed in the Office under 35 U.S.C.
111(b).

(3) A nonprovisional application as used in this chapter means a U.S.
national application for patent which was either filed in the Office
under 35 U.S.C. 111(a), or which entered the national stage from an
international application after compliance with 35 U.S.C. 371.

(b) An international application as used in this chapter means an
international application for patent filed under the Patent Cooperation
Treaty prior to entering national processing at the Designated Office
stage.

                  +++    

NATIONAL APPLICATIONS (35 U.S.C. 111) VS. NATIONAL STAGE APPLICATIONS
(35 U.S.C. 371)

Nonprovisional and provisional applications are national applications.
Treatment of national applications under 35 U.S.C. 111 and national
stage applications under 35 U.S.C. 371 are similar but not identical.
Note the following examples:

(A) Restriction practice under MPEP Section  806+ is applied to national
applications under 35 U.S.C. 111(a) while unity of invention practice
under MPEP Chapter 1800 is applied to national stage applications under
35 U.S.C. 371.

(B) National nonprovisional applications filed under 35 U.S.C. 111(a)
without an executed oath or declaration or filing fee are governed by
the notification practice set forth in 37 CFR 1.53(f) while national
stage applications filed under 35 U.S.C. 371 without an oath or
declaration or national stage fee are governed by the notification
practice set forth in 37 CFR 1.494 and 1.495.

National patent applications fall under three broad types:

(A) applications for patent under 35 U.S.C. 101 relating to a "new and
useful process, machine, manufacture, or composition of matter, etc.";

(B) applications for plant patents under 35 U.S.C. 161; and

(C) applications for design patents 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 examination of
applications for design and plant patents are treated in detail in
Chapters 1500 and 1600, respectively. National applications include
original (nonprovisional), provisional, plant, design, reissue,
divisional, and continuation applications (which may be filed under 37
CFR 1.53(b)), continued prosecution applications (CPA) (filed under 37
(CFR 1.53(d)) and continuation-in-part applications (which may be filed
under 37 CFR 1.53(b).

---SECTION---201.01 Sole

An application wherein the invention is presented as that of a single
person is termed a sole application.

---SECTION---201.02 Joint

A joint application is one in which the invention is presented as that
of two or more persons. See MPEP Section  605.07.

---SECTION---201.03 Correction of Inventorship in an Application

Correction of inventorship in an application is permitted by amendment
under 35 U.S.C. 116, which is implemented by 37 CFR 1.48. The
utilization of a petition under 37 CFR 1.48 will generally correct the
inventorship in the application in which it is filed. 37 CFR 1.48(a) is
directed at correcting the inventorship in an application where the
inventorship was improperly set forth in the executed oath or
declaration filed in the application. 37 CFR 1.48(b) is directed at
correcting the inventorship where the executed oath or declaration had
correctly set forth the inventorship but due to prosecution of the
application, e.g., claim cancellation or amendment, fewer than all of
the currently named inventors are the actual inventors of the remaining
claims. 37 CFR 1.48(c) is directed at correcting the inventorship where
the executed oath or declaration had correctly set forth the
inventorship but due to amendment of the claims to include previously
unclaimed but disclosed subject matter, one or more inventors of the
amended subject matter must be added to the current inventorship. 37 CFR
1.48(d) is directed at provisional applications where an inventor is to
be added. 37 CFR 1.48(e) is directed at provisional applications where
an inventor is to be deleted. 37 CFR 1.48(f) operates to automatically
correct the inventorship upon filing of an executed oath or declaration
under 37 CFR 1.63 in a nonprovisional application or upon filing of a
cover sheet in a provisional application.

Correction of inventorship may also be obtained by the filing of a
continuing application under 37 CFR 1.53 without the need for filing a
petition under 37 CFR 1.48, either in the application containing the
inventorship error (to be abandoned) or in the continuing application.
The continuing application must be filed with the correct inventorship
named therein. The filing of a continuing application to correct the
inventorship is appropriate if at least one of the correct inventors has
been named in the prior application (35 U.S.C. 120 and 37 CFR
1.78(a)(1)).  That is, at least one of the correct inventors must be
named in the executed oath or declaration filed in the prior
application, or where no executed oath or declaration has been submitted
in the prior application but the names of the inventors were set forth
in the application papers pursuant to 37 CFR 1.41(a)(1).  Where the
names of the inventors are to be added, correction of inventorship can
be accomplished by filing a continuing application under 37 CFR 1.53(b)
with a newly executed oath or declaration under 37 CFR 1.63(a). Where
the name of an inventor(s) is to be deleted, applicant can file a
continuing application with a request for deletion of the name of the
inventor(s).  The continuing application may be filed under 37 CFR
1.53(b) or 37 CFR 1.53(d).  Note the requirements of 37 CFR 1.78
(a)(1)(ii)-(iv).

In certain instances where the statement of the lack of deceptive intent
of the inventor to be added or deleted cannot be obtained, a petition
under 37 CFR 1.183 requesting waiver of that requirement may be
possible.

For provisional applications, it may not be necessary to correct the
inventorship under 37 CFR 1.48 (d) and (e) unless there would be no
overlap of inventors upon the filing of the nonprovisional application
with the correct inventorship.  See this MPEP section, headings "37 CFR
1.48(d)" and "37 CFR 1.48(e)."

The need to correct the inventorship in any U.S. nonprovisional or
provisional application may in part be dependent upon whether a foreign
filing under the Paris Convention will occur subsequent to the U.S.
filing. See MPEP Section  201.13.

37 CFR 1.48 does not apply to reissue applications as is noted in its
title, whether correcting an inventorship error in the patent to be
reissued or in the reissue application itself.  Where an error in
inventorship is present in a reissue oath or declaration filed under 37
CFR 1.63 and 1.175, the error may be corrected by the submission of a
newly executed oath or declaration under 37 CFR 1.63 and 1.175 listing
the correct inventive entity.  See MPEP Section  1481.

Where a petition under 37 CFR 1.48 is denied in a final agency action,
the examiner must determine whether a rejection under 35 U.S.C. 102(f)
or (g) is appropriate. Where the petition under 37 CFR 1.48 has been
entered (for a decision thereon) and is dismissed (due to a defect that
can be corrected) consideration under 35 U.S.C. 102(f) or (g) would be
premature.

Although 37 CFR 1.48 does not contain a diligence requirement for filing
the petition, once an inventorship error is discovered, timeliness
requirements under 37 CFR 1.116 and 37 CFR 1.312 apply. For allowed
applications where the issue fee has been paid prior to the entry of a
petition under 37 CFR 1.48, if the petition under 37 CFR 1.48 is
dismissed or denied in an Office action, the application must be
withdrawn from issue so that applicant would be given time to correct
the defect(s). If the petition under 37 CFR 1.48 is granted, then it
would not be necessary to withdraw the application from issue.

Petitions under 37 CFR 1.48 are generally decided by the primary
examiner except:

(A) When the application is involved in an interference (decided by the
Board of Patent Appeals and Interferences);

(B) When the application is a national stage application filed under 35
U.S.C. 371 (decided in the PCT Legal Office);

(C) When accompanied by a petition under 37 CFR 1.183 requesting waiver
of a requirement under 37 CFR 1.48(a) or (c), e.g., waiver of the
statement of lack of deceptive intent by an inventor to be added or
deleted, or waiver of the reexecution of the declaration by all of the
inventors (decided in the Office of Petitions); and

(D) When a second conversion under 37 CFR 1.48(a) is attempted (decided
by the Group Director).

When any petitions for correction of inventorship under 37 CFR
1.48(a)-(c), or change in name under 37 CFR 1.182 are granted, the
examiner will acknowledge any addition or deletion of the names of
inventors by using either Form Paragraph 2.14 or Form Paragraph 2.14.01
in the next Office communication to applicant or his attorney. It will
be necessary to revise the PALM records, issue a corrected filing
receipt, and change the bib-data sheet on the file wrapper. The
correction or change should be noted on the original oath or declaration
by writing in red ink in the left column "See Paper No. __ for
inventorship changes or corrections." See MPEP Section  605.04(g).

2.14 Correction of Inventorship Under 37 CFR 1.48(a) or (c), Sufficient

In view of the papers filed [1], it has been found that this
nonprovisional application, as filed, through error and without
deceptive intent, improperly set forth the inventorship, and
accordingly, this application has been corrected in compliance with 37
CFR 1.48 ([2]). The inventorship of this application has been changed by 
[3].

The application will be forwarded to the Office of Initial Patent
Examination (OIPE) for issuance of a corrected filing receipt, and
correction of the file jacket and PTO PALM data to reflect the
inventorship as corrected.

Examiner Note:

1. In bracket 2, insert --a-- or --c--, as appropriate.

2. In bracket 3, insert explanation of correction made, including
addition or deletion of appropriate names.

2.14.01 Correction of Inventorship Under 37 CFR 1.48(b), Sufficient

In view of the papers filed [1], the inventorship of this nonprovisional
application has been changed by the deletion of [2].

The application will be forwarded to the Office of Initial Patent
Examination (OIPE) for issuance of a corrected filing receipt, and
correction of the file jacket and PTO PALM data to reflect the
inventorship as corrected.

Examiner Note:

1. This form paragraph is to be used only for 37 CFR 1.48(b)
corrections.

2. In bracket 2, insert the names of the deleted inventor(s).

The grant or denial of a petition under 37 CFR 1.48(a) may result in the
lack of inventorship overlap between a parent application and a
continuing application and the consequent inability to claim benefit in
the continuing application of the parent application's filing date under
35 U.S.C. 120. Intervening references must then be considered.

For correction of inventorship in a patent, see 37 CFR 1.324 and MPEP
Section  1481.

A petition under 37 CFR 1.48 will not be required:

(A) Where an application is to issue with the correct inventorship based
on the allowed claims even though the application may have been filed
with an incorrect inventorship based on the claims as originally
submitted;

(B) Where a typographical or transliteration error in the spelling of an
inventor's name is discovered, the Office should simply be notified of
the error. A new oath or declaration is not required. Reference to the
notification will be made on the previously filed oath or declaration.
See 37 CFR 1.19(h) for issuance of a corrected filing receipt;

(C) Where an inventor's name has been changed after the application has
been filed, see MPEP Section  605.04(c);

(D) Where a court has issued an order under 35 U.S.C. 256 for correction
of the inventorship of a patent, it should be submitted directly to the
Certificate of Correction Division along with the Office's certificate
of correction form, PTO-1050. A new declaration under 37 CFR 1.63 is not
required;

(E) Where there is no change of individual but an incorrect name was
given, see 37 CFR 1.182 and MPEP Section  605.04(g);

(F) In a nonprovisional application filed under 35 U.S.C. 111(a), where
the first-filed executed oath or declaration was filed on or after
December 1, 1997 and names the correct inventors, but the inventive
entity on the executed oath or declaration differs from that which was
set forth on filing of the application, e.g., the application
transmittal letter or an unexecuted oath or declaration. See 37 CFR
1.48(f)(1);

(G) In a provisional application filed under 35 U.S.C. 111(b), where the
cover sheet was filed on or after December 1, 1997 which names the
correct inventors, but the inventive entity on the cover sheet differs
from that which was set forth on filing of the provisional application
without a cover sheet. See 37 CFR 1.48(f)(2).

APPLICATIONS FILED UNDER 37 CFR 1.53(f) - NO OATH/DECLARATION

The Office will issue a filing receipt listing the inventors identified
at the time of filing of the application even if the application was
filed under 37 CFR 1.53(f) without an executed oath or declaration.
Where the first-filed executed oath or declaration was filed on or after
December 1, 1997 and sets forth an inventive entity which is different
from the inventive entity initially set forth at the time of filing of
the application, the actual inventorship of the application will be
taken from the executed oath or declaration. See 37 CFR 1.41(a)(1). A
petition under 37 CFR 1.48(a) will not be necessary. See 37 CFR 1.48(f).

Where the first-filed executed oath or declaration was submitted prior
to December 1, 1997 in an application filed without an executed oath or
declaration, if the inventive entity identified on the executed oath or
declaration differs from the inventive entity identified at the time of
filing of the application, a petition under 37 CFR 1.48(a) or (c) must
also be submitted. Upon the grant of the petition under 37 CFR 1.48 by
the primary examiner, the application will be returned to the Office of
Initial Patent Examination (OIPE) for the mailing of a corrected filing
receipt.

The original named inventors should not execute or submit an oath or
declaration under 37 CFR 1.63 merely to timely complete the filing
requirements in reply to a "Notice to File Missing Parts of Application"
where the possibility of an error in inventorship has been discovered or
signed by someone who cannot properly make the averments therein.
Additional time to reply to the Notice is available under 37 CFR
1.136(a) and possibly under 37 CFR 1.136(b).

Example

A nonprovisional application is filed (either prior to, on or after
December 1, 1997) naming A as the sole inventor without an executed
declaration under 37 CFR 1.63. Only claim 1 is presented.

A "Notice to File Missing Parts of Application" is mailed prior to
December 1, 1997. In timely reply thereto after December 1, 1997, a
preliminary amendment adding claim 2, and a declaration under 37 CFR
1.63 executed by inventors A and B are submitted with B being added in
view of claim 2. A petition under 37 CFR 1.48(c) is not required, in
that 37 CFR 1.48(f)(1) will act to set forth an inventorship of A and B.

Similarly, where a preliminary amendment canceling or amending claims
concomitantly requires the deletion of an inventor, such deletion may be
accomplished by the submission of a first-filed executed oath or
declaration on or after December 1, 1997 naming the actual inventive
entity. A petition under 37 CFR 1.48(b) would not be necessary.

 37 CFR 1.48(a)

37 CFR 1.48 Correction of inventorship in a patent application, other
than a reissue application.

(a) If the inventive entity is set forth in error in an executed Section 
1.63 oath or declaration in an application, other than a reissue
application, and such error arose without any deceptive intention on the
part of the person named as an inventor in error or on the part of the
person who through error was not named as an inventor, the application
may be amended to name only the actual inventor or inventors. When the
application is involved in an interference, the amendment must comply
with the requirements of this section and must be accompanied by a
motion under Section  1.634. Such amendment must be accompanied by:

(1) A petition including a statement from each person being added as an
inventor and from each person being deleted as an inventor that the
error in inventorship occurred without deceptive intention on his or her
part;

(2) An oath or declaration by the actual inventor or inventors as
required by Section  1.63 or as permitted by Section Section  1.42, 1.43
or 1.47;

(3) The fee set forth in Section  1.17(i); and

(4) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Section  3.73(b)).

                  +++    

Under 37 CFR 1.48(a), if the correct inventor or inventors are not named
in an executed oath or declaration under 37 CFR 1.63 in a nonprovisional
application for patent, the application can be amended to name only the
actual inventor or inventors so long as the error in the naming of the
inventor or inventors occurred without any deceptive intention on the
part of the person named as an inventor in error or the person who
through error was not named as an inventor.

37 CFR 1.48(a) requires that the amendment be accompanied by:  (1) a
petition including a statement from each person being added and from
each person being deleted as an inventor that the error occurred without
deceptive intention on his or her part; (2) an oath or declaration by
each actual inventor or inventors as required by 37 CFR 1.63 or as
permitted by 37 CFR 1.42, 1.43 or 1.47; (3) the fee set forth in 37 CFR
1.17 (i); and (4) the written consent of any existing assignee, if any
of the originally named inventors has executed an assignment.

Correction may be requested in cases where the person originally named
as inventor was in fact not an inventor or the sole inventor of the
subject matter being claimed.  If such error occurred without any
deceptive intention on the part of the inventor named and/or not named
in error, the Office has the authority to substitute the true inventive
entity for the erroneously named inventive entity. Instances where
corrections can be made include changes from: a mistaken sole inventor
to a different but actual sole inventor; a mistakenly identified sole
inventor to different, but actual, joint inventors; a sole inventor to
joint inventors to include the original sole inventor; erroneously
identified joint inventors to different but actual joint inventors;
erroneously identified joint inventors to a different, but actual, sole
inventor. (Note that 35 U.S.C. 120 and 37 CFR 1.78 require an overlap of
inventorship, hence, refiling, rather than petitioning under 37 CFR
1.48, to change inventorship where the change would not result in an
inventorship overlap may result in the loss of a priority claim.)

A. Statement of Lack of Deceptive Intention

Where a similar inventorship error has occurred in more than one
application for which correction is requested wherein petitioner seeks
to rely on identical statements, only one original set need be supplied
if copies are submitted in all other applications with a reference to
the application containing the originals (original oaths or declarations
under 37 CFR 1.63 and written consent of assignees along with separate
petition fees must be filed in each application).

The statement required from each inventor being added or deleted may
simply state that the inventorship error occurred without deceptive
intention. The statement need not be a verified statement (see MPEP
Section  605).

On very infrequent occasions, the requirements of 37 CFR 1.48(a) have
been waived upon the filing of a petition and fee under 37 CFR 1.183
(along with the petition and fee under 37 CFR 1.48(a)) to permit the
filing of a statement by less than all the parties required to submit a
statement. In re Cooper, 230 USPQ 638, 639 (Dep. Assist. Comm'r Pat.
1986).  However, such a waiver will not be considered unless the facts
of record unequivocally support the correction sought. In re Hardee, 223
USPQ 1122, 1123 (Comm'r Pat. 1984). As 37 CFR 1.48(a) is intended as a
simple procedural remedy and does not represent a substantive
determination as to inventorship, issues relating to the inventors' or
alleged inventors' actual contributions to conception and reduction to
practice are not appropriate for consideration in determining whether
the record unequivocally supports the correction sought.

In those situations where an inventor to be added refuses to submit a
statement supporting the addition or such party cannot be reached,
waiver under 37 CFR 1.183 of the requirement for a statement from that
party would be appropriate upon a showing of such refusal or inability
to reach the inventor.  Every existing assignee of the original named
inventors must give its consent to the requested correction.  Where
there is more than one assignee giving its consent, the extent of that
interest (percentage) should be shown. Where no assignment has been
executed by the inventors, or if deletion of a refusing inventor is
requested, waiver will not be granted absent unequivocal support for the
correction sought.  Petitions under 37 CFR 1.47 are not applicable to
the requirement for statements from each originally named inventor.

An available remedy to obtain correction of inventorship where waiver of
a required statement is not available to correct the inventorship in a
particular application is to refile the application naming the correct
inventive entity.  A petition under 37 CFR 1.48(a) would not then be
required in the newly filed application as no correction would be
needed.  Furthermore, a petition under 37 CFR 1.48(a) would also not be
required in the prior application that was refiled, since the prior
application will be abandoned.  Benefit of the parent application's
filing date would be available under 35 U.S.C. 120 provided there is at
least one inventor overlap between the two applications.  (Note:  a
sole-to-sole correction would not obtain benefit under 35 U.S.C. 120).

B. Oath or Declaration

An oath or declaration under 37 CFR 1.63 by each actual inventor must be
presented.  While each inventor need not execute the same oath or
declaration, each oath or declaration executed by an inventor must
contain a complete listing of all inventors so as to clearly indicate
what each inventor believes to be the appropriate inventive entity. 
Where individual declarations are executed, they must be submitted as
individual declarations rather than combined into one declaration.  For
example, where the inventive entity is A and B, a declaration may not be
executed only by A naming only A as the inventor and a different
declaration may not be executed only by B naming only B as the inventor,
which two declarations are then combined into one declaration with a
first page of boiler plate, a second page with A's signature, and a
second page with B's signature (so that it appears that the declaration
was executed with the entire inventive entity appearing in the
declaration when it did not).

Conflicting oaths or declarations filed:  If the first executed oaths or
declarations that are submitted name different inventive entities (e.g.,
one declaration names A, B, and C as inventors and a second declaration
names D as the inventor) and are filed on the same day, the application
will be considered to name the inventors named in both declarations (A,
B, C, and D) and a new oath or declaration in compliance with 37 CFR
1.63 including the entire inventive entity will be required.  Where an
application is filed with an executed declaration under 37 CFR 1.63
naming an inventive entity that is in conflict with another paper filed
in the application, such as the transmittal letter, the executed
declaration will govern.  However, where an executed declaration is
never submitted and the application papers are in conflict as to the
inventorship, each party identified as an inventor on filing will be
considered to have been named as part of the inventive entity. See 37
CFR 1.41(a)(1).

37 CFR 1.47 is available to meet the requirement for an oath or
declaration under 37 CFR 1.63 as for example where A, B, and C were
originally named as inventors and D who refuses to cooperate is to be
later added as an inventor.  The oath or declaration under 37 CFR 1.63
of inventor D may be supplied pursuant to 37 CFR 1.47(a), but note that
the required 37 CFR 1.48(a)(1) statement must still be supplied by
inventor D (an unlikely event in view of the inability to obtain the
executed oath or declaration under 37 CFR 1.63), or waiver thereof
petitioned under 37 CFR 1.183.  Alternatively, where D is to be added as
an inventor (where inventors A, B, and C have previously executed the
application under 37 CFR 1.63) and it is original inventor A who refuses
to cooperate, the statement under 37 CFR 1.48(a)(1) is only required to
be signed by inventor D.  Originally named inventor A is merely required
to reexecute an oath or declaration in compliance with 37 CFR 1.63. 
Petitions under 37 CFR 1.47 are only applicable to an original oath or
declaration and are not applicable to the reexecution of another oath or
declaration by A.  In such circumstances, a petition under 37 CFR 1.183
should be considered requesting waiver of the requirement of 37 CFR 1.64
that each of the actual inventors, i.e., inventor A, execute the oath or
declaration, particularly where assignee consent is given to the
requested correction.  Absent assignee consent, the petition under 37
CFR 1.183 requesting waiver of the reexecution of the oath or
declaration will be evaluated as to whether the nonsigning inventor was
actually given the opportunity to reexecute the oath or declaration, or
whether the nonsigning inventor could not be reached.

Applications filed with both petitions under 37 CFR 1.47 and 1.48(a)
will be forwarded to the Office of Petitions, after mailing the filing
receipt by the Office of Initial Patent Examination, for consideration
of the petitions.  In those instances wherein petitions under 37 CFR
1.48(a) and 37 CFR 1.47 have both been filed in an application, the
Office of Petitions may first issue a decision on the petition under  37
CFR 1.48(a) so as to determine the appropriate oath or declaration under
37 CFR 1.63 required for the petition under 37 CFR 1.47.

The oath or declaration submitted subsequent to the filing date (37 CFR
1.53(f)) of an application filed under 37 CFR 1.53(b) must clearly
identify the previously filed specification it is intended to execute.
See MPEP Section  601.01(a).

C. Fee

Where waiver under 37 CFR 1.183 is requested in relation to a
requirement under 37 CFR 1.48(a), petition fees under both 37 CFR
1.48(a) and 37 CFR 1.183 are required.  Similarly, where in addition to
a petition under 37 CFR 1.48, two petitions under 37 CFR 1.183 are
presented, e.g., one requesting waiver of a requirement under 37 CFR
1.48 and the other requesting waiver of the reexecution of an oath or
declaration under 37 CFR 1.64, three petition fees are required (one for
the petition filed under 37 CFR 1.48 and two for the petitions filed
under 37 CFR 1.183).

Where a similar error has occurred in more than one application a
separate petition fee must be submitted in each application in which
correction is requested.

If the petition fee has not been submitted or authorized the petition
will be dismissed.

D. Written Consent of Assignee

The written consent of every existing assignee of the original named
inventors must be submitted.  37 CFR 1.48(a)(4). 37 CFR 1.48(a) does not
limit assignees to those who are recorded in the Patent and Trademark
Office records. The Office employee deciding the petition should check
the file record for any indication of the existence of an assignee
(e.g., a small entity statement from an assignee.)

Where no assignee exists petitioner should affirmatively state that
fact. If the file record including the petition is silent as to the
existence of an assignee it will be presumed that no assignee exists.
Such presumption should be set forth in the decision to alert
petitioners to the requirement.

The individual signing on behalf of the assignee giving its consent to
the requested inventorship correction, should specifically state that he
or she has the authority to act on behalf of the assignee.  In the
absence of such a statement, the consent will be accepted if it is
signed by an appropriate official of the assignee (e.g., president, vice
president, secretary, treasurer, or derivative thereof) if the
official's title has been made of record.  A general statement of
authority to act for the assignee, or on the specific matter of consent,
or the appropriate title of the party signing on behalf of the assignee
should be made of record in the consent.  However, if it appears in
another paper of record, e.g., small entity statement, it is also
acceptable.  Further, the assignee must establish its ownership of the
application in accordance with 37 CFR 3.73. MPEP Section  324.

E. Continuing Applications

35 U.S.C. 120 permits a continuing application to claim the benefit of
the filing date of a copending, previously filed, parent application
provided there is inventorship overlap between the continuing
application and the parent application.  If the inventive entity of a
continuing application includes an inventor named in the parent
application, the inventorship overlap required by 35 U.S.C. 120 is met.

Example

The parent application names inventors A and B and claims inventions 1
and 2.  Inventor A contributes only to invention 1 and inventor B
contributes only to invention 2.  A restriction requirement is made and
invention 1 was elected.  Upon allowance of claims directed to invention
1 and cancellation of claims directed to invention 2, a petition under
37 CFR 1.48(b) was filed requesting deletion of inventor B.  The
petition under 37 CFR 1.48(b) was granted by the primary examiner. 
Prior to the issuance of the parent application, a divisional
application claiming benefit under 35 U.S.C. 120 to the parent
application, is filed claiming only invention 2 and naming only inventor
B.  The inventorship overlap required by 35 U.S.C. 120 is met in this
instance even though at the time of filing of the divisional
application, the inventorship overlap was lost as a result of the
deletion of an inventor in the parent application.  The overlap of
inventorship need not be present on the date the continuing application
is filed nor present when the parent application issues or becomes
abandoned.

On filing a continuing application under 37 CFR 1.53(b) or (d) it should
not be assumed that an error in inventorship made in a parent
application was in fact corrected therein in response to a petition
under 37 CFR 1.48(a) unless a decision from the Patent and Trademark
Office to that effect was received by petitioner. In a continued
prosecution application (CPA) filed under 37 CFR 1.53(d), a petition to
add an inventor to a parent application that was not acted on (e.g.,
filed after final rejection) will be automatically considered in the
CPA.  Until the petition is granted, however, the inventorship remains
the same as the prior application.  A continuing application naming the
additional inventor can be filed under 35 U.S.C. 111(a) and 37 CFR
1.53(b) with a newly executed oath or declaration by the new inventive
entity along with a request for priority under 35 U.S.C. 120 without the
need for a decision on the petition under 37 CFR 1.48 filed in the
parent application.

Should an error in inventorship in a parent application be discovered,
whether it is the need to add and/or to delete inventors, when preparing
to file a continuing application, the continuing application may be
filed under 37 CFR 1.53(b) with the correct inventive entity without the
need for a petition under 37 CFR 1.48(a) in the parent or continuing
application provided the parent application is to be abandoned on filing
of the continuing application.  In filing the continuing application
under 37 CFR 1.53(b), a copy of an oath or declaration from the prior
application can only be used where inventors are to be deleted (37 CFR
1.53(b)(1) and 37 CFR 1.63(d)(1)(ii)), but not where inventors are to be
added.  Where inventors are to be added, a newly executed oath or
declaration must be submitted.  See 37 CFR 1.63(d)(5).

After discovery of an inventorship error, the application can also be
refiled under 37 CFR 1.53(d)(4) as a CPA where inventors are only to be
deleted.

In filing a continuing application to correct the inventorship, whether
utilizing a copy of the oath or declaration from the prior application
under 37 CFR 1.53(b) or a CPA filing under 37 CFR 1.53(d), it is
important to recognize that 37 CFR 1.78 requires for priority purposes
that the prior application must either have had the filing fee, or the
retention fee as set forth in 37 CFR 1.21(l), paid within the period set
forth in 37 CFR 1.53(f) so as to establish copendency. See 37 CFR
1.78(a)(1)(iii) and 37 CFR 1.78(a)(1)(iv).

Should a continuing application be filed either under 37 CFR 1.53(b)(1)
where a copy of the oath or declaration from the prior application is
utilized, or under 37 CFR 1.53(d) as a CPA, and purports to add an
inventor, the inventorship of the prior application will be retained in
the continuing application as addition of an inventor is not permitted
in these instances.  The absence of a petition to correct the
inventorship submitted with the continuing application will not affect
the filing date of the continuing application.  However, the retained
inventorship must then be corrected by the filing of a petition under 37
CFR 1.48(a) in the continuing application stating that the error in
failing to name the additional inventor in the prior application was
without deceptive intention.  Where an inventor is to be added, it is
recommended that a continuing application be filed under 37 CFR 1.53(b)
with a newly executed oath or declaration and not be filed with a copy
of the oath or declaration from the prior application.  This procedure
eliminates the need for a petition under 37 CFR 1.48.

An inventorship error discovered while prosecuting a continuing
application that occurred in both an abandoned parent application and
the continuing application can be corrected in both applications by
filing a single petition in the continuing application (e.g., A + B
named in parent, B + C named in continuing application, actual
inventorship is C +D thereby eliminating inventorship overlap and
resulting loss of priority claim under 35 U.S.C. 120 if the error is not
corrected in abandoned parent application as well as in continuation
application).  Absent such loss of inventorship overlap, correction need
not be made in the abandoned application.

When entering the national stage under 35 U.S.C. 371, correction of
inventorship is via the provisions of 37 CFR 1.48(a).  Whereas the first
sentence of 37 CFR 1.48(a) refers to errors in the 37 CFR 1.63 oath or
declaration, this is analogous to the misnaming of the
applicant/inventor in the international application, and the procedure
under 37 CFR 1.48(a) applies.

2.13 Correction of Inventorship Under 37 CFR 1.48(a), Insufficient

The petition to correct the inventorship of this nonprovisional
application under 37 CFR 1.48(a) is deficient because:

Examiner Note:

1. This paragraph should only be used in response to requests to correct
an error in the naming of the prior inventors in non-provisional
applications.  If the request is merely to delete an inventor because
claims were canceled or amended such that the deleted inventor is no
longer an actual inventor of any claim in the application, use paragraph
2.13.01 instead of this paragraph.

Potential rejections

A rejection under 35 U.S.C. 102(f) or (g) must be considered if the
petition is denied.

The grant or denial of the petition may result in the loss of
inventorship overlap between a parent application and a continuing
application and an inability to claim benefit in the continuing
application of the parent application's filing date under 35 U.S.C. 120. 
Intervening references must then be considered.

2. A primary examiner may not decide the petition if:

(a) the petition is also accompanied by a petition under 37 CFR 1.183
requesting waiver of one of the requirements explicitly set forth in 37
CFR 1.48(a) (typically a refusal of one of the inventors to be added or
deleted to execute the required statement of facts) - the petition for
correction of inventorship and request for waiver of the rules should be
forwarded to the Office of Petitions; or

(b) it represents an attempt to effect a second conversion under 37 CFR
1.48(a) - the second attempt must be returned to the Group Director.

3. One or more of form paragraphs 2.13a - 2.13e should follow this form
paragraph, as applicable.

4. Where it appears that: 1) the inventor(s) to be added or deleted may
be hostile and will not execute a required statement of facts, and 2)
the actual inventorship would overlap the original inventorship (37 CFR
1.78), follow this form paragraph with form paragraph 2.13f.

5. Petitions under 37 CFR 1.41 to change inventorship where an executed
oath or declaration has not been filed are to be acted upon by OIPE.

6. Where there is a correction in a person's name, e.g., due to
misspelling, or marriage, a petition under 37 CFR 1.48 is inappropriate.
See MPEP Section  605.04(b) and (c) for name changes.

7. An initial executed oath or declaration under 37 CFR 1.63 may change
the inventorship as originally set forth when the application is filed
without an executed oath or declaration without petition for correction
of inventorship (37 CFR 1.48(f)).

2.13a Statement of Facts Problem (for Use Following FP 2.13, If
Applicable)

The statement of facts by an inventor or inventors to be added or
deleted does not explicitly state that the inventorship error occurred
without deceptive intent on his or her part or cannot be construed to so
state.

2.13b No New Oath or Declaration (for Use Following FP 2.13 or 2.13.02,
If Applicable)

An oath or declaration by each actual inventor or inventors listing the
entire inventive entity has not been submitted.

2.13c Required Fee Not Submitted (for Use Following FP 2.13, 2.13.01 or
2.13.02, If Applicable)

It lacks the required fee under 37 CFR 1.17(i).

2.13d Written Consent Missing (for Use Following FP 2.13 or 2.13.02, If
Applicable)

It lacks the written consent of any assignee of one of the originally
named inventors.

2.13e 37 CFR 3.37(b) Submission (for Use Following FP 2.13 or 2.13.02,
If Applicable)

A 37 CFR 3.73(b) submission has not been received to support action by
the assignee.

2.13f Hostile Inventor(s)/Inventorship Overlap (for Use Following FP
2.13, If Applicable)

As it appears that a party required by 37 CFR 1.48(a)(1) to submit a
statement of facts may not be willing to submit such statement,
applicant should consider either: a) submission of a petition under 37
CFR 1.183 to waive that requirement if the original named inventor(s)
has assigned the entire right and interest to an assignee who has given
its consent to the requested inventorship correction, MPEP Section 
201.03, Verified Statement of Facts, or b) refiling the application
(where addition is needed under 37 CFR 1.53(b) with a new oath or
declaration and any necessary petition under 37 CFR 1.47, or where only
deletion is needed, either under 37 CFR 1.53(b) utilizing a copy of a
prior oath or declaration 37 CFR 1.63(d)(iii), or under 37 CFR 1.53(d)),
thereby eliminating the need for a 37 CFR 1.48 petition.

2.13.01 Correction of Inventorship Under 37 CFR 1.48(b), Insufficient

The petition requesting the deletion of an inventor in this
nonprovisional application under 37 CFR 1.48(b) is deficient because:

Examiner Note:

1. This paragraph should only be used when the inventorship was
previously correct when originally executed but an inventor is being
deleted because claims have been amended or canceled such that he or she
is no longer an inventor of any remaining claim in the non-provisional
application.  If the inventorship is being corrected because of an error
in naming the correct inventors, use paragraph 2.13 instead of this
paragraph.

2. Follow this form paragraph with one or both of form paragraphs 2.13c
and 2.13g.

3. See note 1 of form paragraph 2.13, Potential rejections.

2.13g Statement Under 37 CFR 1.48(b)(1) Problem (for Use Following FP
2.13.01, If Applicable)

The petition lacks the statement required under 37 CFR 1.48 (b)(1).

2.13.02 Correction of Inventorship Under 37 CFR 1.48(c), Insufficient

The petition to correct the inventorship in this nonprovisional
application under 37 CFR 1.48(c) requesting addition of an inventor(s)
is deficient because:

Examiner Note:

1. This paragraph should only be used when the inventorship was
previously correct when the application was originally executed, but the
inventorship now needs to be changed due to subsequent addition of
subject matter from the specification to the claims, which subject
matter was contributed by a party not originally named as an inventor.

2. See note 2 of form paragraph 2.13.

3. Follow this form paragraph with any of form paragraphs 2.13b-12.13e
or 2.13h.

4. See note 1 of form paragraph 2.13.01, Potential rejections.

5. See notes 4-7 of form paragraph 2.13.

2.13h Statement of Facts, Added Inventor (for Use Following FP 2.13.02,
If Applicable)

The statement of facts by the inventor(s) to be added does not
explicitly state that the amendment of the inventorship is necessitated
by amendment of the claims and that the inventorship error occurred
without deceptive intent on the part of the inventor(s) to be added, or
cannot be construed to so state.

2.14 Correction of Inventorship Under 37 CFR 1.48(a) or (c), Sufficient

In view of the papers filed [1], it has been found that this
nonprovisional application, as filed, through error and without
deceptive intent, improperly set forth the inventorship, and
accordingly, this application has been corrected in compliance with 37
CFR 1.48([2]).  The inventorship of this application has been changed by
[3].

The application will be forwarded to the Office of Initial Patent
Examination (OIPE) for issuance of a corrected filing receipt, and
correction of the file jacket and PTO PALM data to reflect the
inventorship as corrected.

Examiner Note:

1. In bracket 2, insert --a-- or --c--, as appropriate.

2. In bracket 3, insert explanation of correction made, including
addition or deletion of appropriate names.

2.14.01 Correction of Inventorship Under 37 CFR 1.48(b), Sufficient

In view of the papers filed [1], the inventorship of this nonprovisional
application has been changed by the deletion of [2].

The application will be forwarded to the Office of Initial Patent
Examination (OIPE) for issuance of a corrected filing receipt, and
correction of the file jacket and PTO PALM data to reflect the
inventorship as corrected.

Examiner Note:

1. This form paragraph is to be used only for  37 CFR 1.48(b)
corrections.

2. In bracket 2, insert the names of the deleted inventor(s).

 37 CFR 1.48(b)

37 CFR 1.48 Correction of inventorship in a patent application, other
than a reissue application.

                  +++    

(b) If the correct inventors are named in a nonprovisional application,
other than a reissue application, and the prosecution of the application
results in the amendment or cancellation of claims so that fewer than
all of the currently named inventors are the actual inventors of the
invention being claimed in the application, an amendment must be filed
deleting the name or names of the person or persons who are not
inventors of the invention being claimed. When the application is
involved in an interference, the amendment must comply with the
requirements of this section and must be accompanied by a motion under
Section  1.634.  Such amendment must be accompanied by:

(1) A petition including a statement identifying each named inventor who
is being deleted and acknowledging that the inventor's invention is no
longer being claimed in the application; and

(2) The fee set forth in Section  1.17(i).

                  +++    

37 CFR 1.48(b) provides for deleting the names of persons originally
properly included as inventors, but whose invention is no longer being
claimed in a nonprovisional application.  Such a situation would arise
where claims have been amended or deleted during prosecution because
they are unpatentable or as a result of a requirement for restriction of
the application to one invention, or for other reasons.  A petition
under  37 CFR 1.48(b) to delete an inventor would be appropriate prior
to an action by the examining group where it is decided not to pursue
particular aspects of an invention attributable to some of the original
named inventors.

37 CFR 1.48(b) requires that the amendment be accompanied by: (1) a
petition including a statement identifying each named inventor who is
being deleted and acknowledging that the inventor's invention is no
longer being claimed in the application; and (2) a fee under  37 CFR
1.17(i).  The statement may be signed by applicant's registered attorney
or agent who then takes full responsibility for ensuring that the
inventor is not being improperly deleted from the application.  Written
consent of any assignee is not required for petitions filed under  37
CFR 1.48(b).

 37 CFR 1.48(c)

37 CFR 1.48 Correction of inventorship in a patent application, other
than a reissue application.

                  +++    

(c) If a nonprovisional application, other than a reissue application,
discloses unclaimed subject matter by an inventor or inventors not named
in the application, the application may be amended to add claims to the
subject matter and name the correct inventors for the application.  When
the application is involved in an interference, the amendment must
comply with the requirements of this section and must be accompanied by
a motion under Section  1.634.  Such amendment must be accompanied by:

(1) A petition including a statement from each person being added as an
inventor that the amendment is necessitated by amendment of the claims
and that the inventorship error occurred without deceptive intention on
his or her part;

(2) An oath or declaration by the actual inventor or inventors as
required by Section  1.63 or as permitted by Section Section  1.42, 1.43
or 1.47;

(3) The fee set forth in Section  1.17(i); and

(4) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Section  3.73(b)).

                  +++    

37 CFR 1.48(c) provides for the situation where a nonprovisional
application discloses unclaimed subject matter by an inventor or
inventors not named in the application when an executed declaration
under  37 CFR 1.63 was first filed.  In such a situation, the
nonprovisional application may be amended pursuant to  37 CFR 1.48(c) to
add claims directed to the originally unclaimed but disclosed subject
matter and also to name the correct inventors for the application based
on the newly added claims.  Any claims added to the application must be
supported by the disclosure as filed and cannot add new matter. 

37 CFR 1.48(c) requires that the amendment must be accompanied by:  (1)
a petition including a statement from each person being added as an
inventor that the amendment is necessitated by an amendment to the
claims and that the inventorship error occurred without deceptive
intention on his or her part; (2) an oath or declaration by each actual
inventor; (3) the fee under  37 CFR 1.17(i); and (4) the written consent
of any assignee of the original named inventors.

 37 CFR 1.48(d)

37 CFR 1.48 Correction of inventorship in a patent application, other
than a reissue application.

                  +++    

(d) If the name or names of an inventor or inventors were omitted in a
provisional application through error without any deceptive intention on
the part of the omitted inventor or inventors, the provisional
application may be amended to add the name or names of the omitted
inventor or inventors.  Such amendment must be accompanied by:

(1) A petition including a statement that the inventorship error
occurred without deceptive intention on the part of the omitted inventor
or inventors; and

(2) The fee set forth in Section  1.17(q).

                  +++    

37 CFR 1.48(d) provides a procedure for adding the name of an inventor
in a provisional application, where the name was originally omitted
without deceptive intent.

37 CFR 1.48(d) requires that the amendment be accompanied by:  (1) a
petition including a statement that the inventorship error occurred
without deceptive intention on the part of the omitted inventor or
inventors; and (2) the fee set forth in  37 CFR 1.17(q).

 37 CFR 1.48(e)

37 CFR 1.48 Correction of inventorship in a patent application, other
than a reissue application.

                  +++    

(e) If a person or persons were named as an inventor or inventors in a
provisional application through error without any deceptive intention on
the part of such person or persons, an amendment may be filed in the
provisional application deleting the name or names of the person or
persons who were erroneously named.  Such amendment must be accompanied
by:

(1) A petition including a statement by the person or persons whose name
or names are being deleted that the inventorship error occurred without
deceptive intention on the part of such person or persons;

(2) The fee set forth in Section  1.17(q); and

(3) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Section  3.73(b)).

                  +++    

  37 CFR 1.48(e) provides a procedure for deleting the name of a person
who was erroneously named as an inventor in a provisional application. 
Under  35 U.S.C. 119(e), as contained in Public Law 103 - 465, a later
filed application under  35 U.S.C. 111(a) may claim priority benefits
based on a copending provisional application so long as the applications
have at least one inventor in common.  An error in naming a person as an
inventor in a provisional application would not require correction by
deleting the erroneously named inventor from the provisional application
since this would have no effect upon the ability of the provisional
application to serve as a basis for a priority claim under  35 U.S.C.
119(e).  However, if applicant chooses to correct the inventive entity
of a provisional application,  37 CFR 1.48(e) sets forth the procedures
for deleting the name of a person erroneously named as an inventor in a
provisional application.

37 CFR 1.48(e) requires that the amendment be accompanied by:  (1) a
petition including a statement of lack of deceptive intent by the person
whose name is being deleted establishing that the error occurred without
deceptive intention on his or her part; (2) the fee set forth in  37 CFR
1.17(q); and (3) the written consent of any assignee.

 37 CFR 1.48(f)

37 CFR 1.48 Correction of inventorship in a patent application, other
than a reissue application.

                  +++    

(f)(1) If the correct inventor or inventors are not named on filing a
nonprovisional application under Section  1.53(b) without an executed
oath or declaration under Section  1.63, the later submission of an
executed oath or declaration under Section  1.63 during the pendency of
the application will act to correct the earlier identification of
inventorship.

(2) If the correct inventor or inventors are not named on filing a
provisional application without a cover sheet under Section  1.51(c)(1),
the later submission of a cover sheet under Section  1.51(c)(1) during
the pendency of the application will act to correct the earlier
identification of inventorship.

                  +++    

37 CFR 1.48(f)(1) and (f)(2) will act to automatically correct an
earlier identification of inventorship in a nonprovisional application
by the filing of an initial executed oath or declaration and in a
provisional application by the filing of an initial cover sheet.  A
petition and fee is not required for the inventorship correction to
occur.

37 CFR 1.48(f)(1) is not applicable for national stage applications
filed under  35 U.S.C. 371 where the inventorship has been erroneously
named in the international application.  Accordingly, if the
inventorship set forth in the oath or declaration filed in the national
stage application differs from the inventorship specified in the
international application, the oath or declaration must be accompanied
by a petition under  37 CFR 1.48(a).

 37 CFR 1.48(g)

37 CFR 1.48 Correction of inventorship in a patent application, other
than a reissue application.

                  +++    

(g) The Office may require such other information as may be deemed
appropriate under the particular circumstances surrounding the
correction of inventorship.

                  +++    

---SECTION---201.04 Parent Application

The term "parent" is applied to an earlier application of an inventor
disclosing a given invention. Such invention may or may not be claimed
in the first application.  Benefit of the filing date of copending
parent application may be claimed under  35 U.S.C. 120. The term parent
will not be used to describe a provisional application.

---SECTION---201.04(a) Original Application

"Original" is used in the patent statute and rules to refer to an
application which is not a reissue application.  An original application
may be a first filing or a continuing application.

---SECTION---201.04(b) Provisional Application

35 U.S.C. 111 Application.

                  +++    

(b) PROVISIONAL APPLICATION.-

(1) AUTHORIZATION.-A provisional application for patent shall be made or
authorized to be made by the inventor, except as otherwise provided in
this title, in writing to the Commissioner. Such application shall
include-

(A) a specification as prescribed by the first paragraph of section 112
of this title; and

(B) a drawing as prescribed by section 113 of this title.

(2) CLAIM.-A claim, as required by the second through fifth paragraphs
of section 112, shall not be required in a provisional application.

(3) FEE.-(A) The application must be accompanied by the fee required by
law.

(B) The fee may be submitted after the specification and any required
drawing are submitted, within such period and under such conditions,
including the payment of a surcharge, as may be prescribed by the
Commissioner.

(C) Upon failure to submit the fee within such prescribed period, the
application shall be regarded as abandoned, unless it is shown to the
satisfaction of the Commissioner that the delay in submitting the fee
was unavoidable or unintentional.

(4) FILING DATE.-The filing date of a provisional application shall be
the date on which the specification and any required drawing are
received in the Patent and Trademark Office.

(5) ABANDONMENT.-The provisional application shall be regarded as
abandoned 12 months after the filing date of such application and shall
not be subject to revival thereafter.

(6) OTHER BASIS FOR PROVISIONAL APPLICATION.-Subject to all the
conditions in this subsection and section 119(e) of this title, and as
prescribed by the Commissioner, an application for patent filed under
subsection (a) may be treated as a provisional application for patent.

(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.-A
provisional application shall not be entitled to the right of priority
of any other application under section 119 or 365(a) of this title or to
the benefit of an earlier filing date in the United States under section
120, 121, or 365(c) of this title.

(8) APPLICABLE PROVISIONS.-The provisions of this title relating to
applications for patent shall apply to provisional applications for
patent, except as otherwise provided, and except that provisional
applications for patent shall not be subject to sections 115, 131, 135,
and 157 of this title.

                  +++    

37 CFR 1.9 Definitions.

(a)(1) A national application as used in this chapter means a U.S.
application for patent which was either filed in the Office under  35
U.S.C. 111, or which entered the national stage from an international
application after compliance with  35 U.S.C. 371.

(2) A provisional application as used in this chapter means a U.S.
national application for patent filed in the Office under  35 U.S.C.
111(b).

(3) A nonprovisional application as used in this chapter means a U.S.
national application for patent which was either filed in the Office
under  35 U.S.C. 111(a), or which entered the national stage from an
international application after compliance with  35 U.S.C. 371.

                  +++    

37 CFR 1.53 Application number,  filing date, and completion of
application.

                  +++    

(c) Application filing requirements - Provisional application.  The
filing date of a provisional application is the date on which a
specification as prescribed by the first paragraph of  35 U.S.C. 112,
and any drawing required by Section  1.81(a) are filed in the Patent and
Trademark Office.  No amendment, other than to make the provisional
application comply with the patent statute and all applicable
regulations, may be made to the provisional application after the filing
date of the provisional application.

(1) A provisional application must also include the cover sheet required
by Section  1.51(c)(1) or a cover letter identifying the application as
a provisional application.  Otherwise, the application will be treated
as an application filed under paragraph (b) of this section.

(2) An application for patent filed under paragraph (b) of this section
may be converted to a provisional application and be accorded the
original filing date of the application filed under paragraph (b) of
this section,

(i) Provided that a petition requesting the conversion, with the fee set
forth in Section  1.17(q), is filed prior to the earliest of:

(A) Abandonment of the application filed under paragraph (b) of this
section;

(B) Payment of the issue fee on the application filed under paragraph
(b) of this section;

(C) Expiration of twelve months after the filing date of the application
filed under paragraph (b) of this section; or

(D) The filing of a request for a statutory invention registration under
Section  1.293 in the application filed under paragraph (b) of this
section.

(ii) The grant of any such petition will not entitle applicant to a
refund of the fees which were properly paid in the application filed
under paragraph (b) of this section.

(3) A provisional application is not entitled to the right of priority
under  35 U.S.C. 119 or 365(a) or Section  1.55, or to the benefit of an
earlier filing date under  35 U.S.C. 120, 121 or 365(c) or Section  1.78
of any other application.  No claim for priority under Section 
1.78(a)(3) may be made in a design application based on a provisional
application.  No request under Section  1.293 for a statutory invention
registration may be filed in a provisional application.  The
requirements of Section Section  1.821 through 1.825 regarding
application disclosures containing nucleotide and/or amino acid
sequences are not mandatory for provisional applications.

                  +++    

One of the provisions of the Uruguay Round Agreements Act which is
effective as of June 8, 1995, is the establishment of a domestic
priority system. The Act provides a mechanism to enable domestic
applicants to quickly and inexpensively file provisional applications. 
Under the provisions of  35 U.S.C. 119(e), applicants are entitled to
claim the benefit of priority in a given application in the United
States. The domestic priority period will not count in the measurement
of the 20-year patent term.  See  35 U.S.C. 154(a)(3). Thus, domestic
applicants are placed on equal footing with foreign applicants with
respect to the patent term.

The parts of a provisional application that are required are set forth
in  37 CFR 1.51(c) and MPEP Section  601.01 and Section  601.01(b). The
filing date of a provisional application is the date on which (1) a
specification which complies with  35 U.S.C. 112, first paragraph, and
(2) any drawing required by  37 CFR 1.81(a) are filed. A provisional
application must also include a cover sheet or cover letter identifying
the application as a provisional application. Otherwise, the application
will be treated as an application filed under  37 CFR 1.53(b). The
filing fee is set forth in  37 CFR 1.16(k).

NOTE:

(A) No claim is required in a provisional application.

(B) No oath or declaration is required in a provisional application.

(C) Provisional applications will not be examined for patentability,
placed in an interference, or made the subject of a statutory invention
registration.

A provisional application will automatically be abandoned 12 months
after its filing date and will not be subject to revival to restore it
to pending status thereafter.  Since a provisional application can be
pending for no more than 12 months, if the last day of pendency is on a
Saturday, Sunday, or Federal holiday, copendency would require that the
later filed nonprovisional application be filed on or prior to the
Saturday, Sunday, or Federal holiday. See  37 CFR 1.78(a)(3). For
example, if a provisional application was filed on June 28,1996, the
last day of pendency of the provisional application under  35 U.S.C.
111(b)(5) is June 28, 1997.  Since June 28, 1997 is a Saturday, a
nonprovisional application claiming the benefit of the provisional
application must be filed on or prior to Saturday June 28, 1997 (see  37
CFR 1.78(a)(3)). Note that new patent applications filed in accordance
with  37 CFR 1.10 will be stamped by the Office with the date of deposit
as "Express Mail" with the United States Postal Service. For example, if
a new patent application is deposited in "Express Mail" in accordance
with  37 CFR 1.10 on a Saturday and the United States Postal Service
gives it a date of deposit of Saturday, the Office will accord and stamp
the correspondence with the Saturday date.  37 CFR 1.6(a)(2).  A
provisional application is not entitled to claim priority benefits based
on any other application under  35 U.S.C. 119, 120, 121, or 365.

An application filed under  37 CFR 1.53(b) may be converted to a
provisional application provided a petition requesting the conversion is
submitted along with the fee as set forth in  37 CFR 1.17(q). The
petition and fee must be submitted prior to the earlier of the
abandonment of the nonprovisional application, the payment of the issue
fee, the expiration of 12 months after the filing date of the
nonprovisional application, or the filing of a request for statutory
invention registration. The grant of any such petition will not entitle
applicant to a refund of the fees which were properly paid in the
application filed under  37 CFR 1.53(b).

Design applications may not make a claim for priority of a provisional
application under  37 CFR 1.78(a)(3).

Form PTO/SB/16. Provisional Application for Patent Cover Sheet[GRAPHIC]

[GRAPHIC]

---SECTION---201.05 Reissue Application

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.

---SECTION---201.06 Division Application

A later application for an independent or distinct invention, carved out
of a pending application and disclosing and claiming only subject matter
disclosed in the earlier or parent application, is known as a divisional
application or "division." It may be filed pursuant to  37 CFR 1.53(b)
or 1.53(d). 37 CFR 1.60 and 1.62 have been deleted as of December 1,
1997.  The practices set forth in former  37 CFR 1.60 and former 1.62
have been incorporated into  37 CFR 1.53(b) and 1.53(d), respectively. 
Continued prosecution application (CPA) practice set forth in  37 CFR
1.53(d) has replaced the file wrapper continuing (FWC) practice set
forth in former  37 CFR 1.62.  Therefore, divisional applications
previously filed under  37 CFR 1.60 or 1.62 should now be filed under 
37 CFR 1.53(b) or 1.53(d).  Both the parent and divisional applications
must have at least one common applicant. 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. An
application claiming the benefits of a provisional application under  35
U.S.C. 119(e) should not be called a "division" of the provisional
application since the application will have its patent term calculated
from its filing date, whereas an application filed under  35 U.S.C. 120,
121, or 365(c) will have its patent term calculated from the date on
which the earliest application was filed, provided a specific reference
is made to the earlier filed application(s).  35 U.S.C. 154(a)(2) and
(a)(3).

In the interest of expediting the processing of newly filed divisional
applications, filed as a result of a restriction requirement, applicants
are requested to include the appropriate Patent and Trademark Office
classification of the divisional application and the status and location
of the parent application, on the papers submitted.  The appropriate
classification for the divisional application may be found in the Office
communication of the parent application wherein the requirement was
made. It is suggested that this classification designation be placed in
the upper right hand corner of the letter of transmittal accompanying
these divisional applications.

Use Form Paragraph 2.01 to remind applicant of possible division status.

2.01 Definition of Division

This application appears to be a division of Application No. [1], filed
[2].  A later application for a distinct or independent invention,
carved out of a pending application and disclosing and claiming only
subject matter disclosed in the earlier or parent application, is known
as a divisional application or  "division."  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.

Examiner Note:

1. In bracket 1, insert the Application No.(series code and serial no.)
of the parent application.

2. In bracket 2, insert the filing date of the parent application.

3. An application claiming the benefits of a provisional application
under  35 U.S.C. 119(e) should not be called a "division" of the
provisional application since the application will have its patent term
calculated from its filing date, whereas an application filed under  35
U.S.C. 120, 121, or 365(c) will have its term calculated from the date
on which the earliest application was filed, provided a specific
reference is made to the earlier filed application(s),  35 U.S.C.
154(a)(2) and (a)(3).

A design application may be considered to be a division of a utility
application (but not of a provisional application), and is entitled to
the filing date thereof if the drawings of the earlier filed utility
application show the same article as that in the design application
sufficiently to comply with  35 U.S.C. 112, first paragraph. However,
such a divisional design application may only be filed under the
procedure set forth in  37 CFR 1.53(b) not under  37 CFR 1.53(d).  Note
that  37 CFR 1.60 and  37 CFR 1.62 have been deleted as of December 1,
1997.  See MPEP Section  1504.20.

While a divisional application may depart from the phraseology used in
the parent application there may be no departure therefrom in substance
or variation in the disclosure that would amount to "new matter" if
introduced by amendment into the parent application.  Compare MPEP
Section  201.08 and Section  201.11.

For notation to be put on the file wrapper by the examiner in the case
of a divisional application, see MPEP Section  202.02.

---SECTION---201.06(a) Former 37 CFR 1.60 Divisional-Continuation
Procedure

[Note: 37 CFR 1.60 was deleted effective December 1, 1997.  See 1203
O.G. 63, October 21, 1997.  A continuation or divisional application
filed under  37 CFR 1.60 on or after December 1, 1997, will
automatically be treated as an application filed under  37 CFR 1.53(b). 
All continuation and divisional applications filed under  37 CFR 1.60
prior to December 1, 1997 will continue to be processed and examined
under the procedures set forth in former  37 CFR 1.60.  Thus, the
following discussion of divisional-continuation practice under former 
37 CFR 1.60 is being retained in the MPEP and all references to the
rules in this section are directed to the rules that were in effect
prior to December 1, 1997.]

37 CFR 1.60 Continuation or divisional application for invention
disclosed in a prior nonprovisional application

(a) [Reserved]

(b) An applicant may omit signing of the oath or declaration in a
continuation or divisional application (filed under the conditions
specified in 35 U.S.C.120 or 121 and Section  1.78(a)) if:

(1) the prior application was a nonprovisional application and a
complete application as set forth in Section  1.51(a)(1);

(2) applicant indicates that the application is being filed pursuant to
this section and files a true copy of the prior complete application as
filed including the specification (with claims), drawings, oath or
declaration showing the signature or an indication it was signed, and
any amendments referred to in the oath or declaration filed to complete
the prior application;

(3) the inventors named in the continuation or divisional application
are the same or less than all the inventors named in the prior
application; and

(4) the application is filed before the patenting, or abandonment of, or
termination of proceedings on the prior application. The copy of the
prior application must be accompanied by a statement that the
application papers filed are a true copy of the prior complete
application. Such statement must be by the applicant or applicant's
attorney or agent and must be a verified statement if made by a person
not registered to practice before the Patent and Trademark Office. Only
amendments reducing the number of claims or adding a reference to the
prior application (Section  1.78(a)) will be entered before calculating
the filing fee and granting the filing date. If the continuation or
divisional application is filed by less than all the inventors named in
the prior application, a statement must accompany the application when
filed requesting deletion of the names of the person or persons who are
not inventors of the invention being claimed in the continuation or
divisional application. Except as provided in paragraph (d) of this
section, if a true copy of the prior application as filed is not filed
with the application or if the statement that the application papers are
a true copy is omitted, the application will not be given a filing date
earlier than the date upon which the copy and statement are filed,
unless a petition with the fee set forth in Section  1.17(i) is filed
which satisfactorily explains the delay in filing these items.

(c) If an application filed pursuant to paragraph (b) of this section is
incomplete for reasons other than those specified in paragraph (d) of
this section, applicant will be notified and given a time period within
which to complete the application in order to obtain a filing date as of
the date of filing the omitted item provided the omitted item is filed
before patenting or abandonment of or termination of proceedings on the
prior application.  If the omission is not corrected within the time
period set, the application will be returned or otherwise disposed of;
the fee, if submitted, will be refunded less the handling fee set forth
in Section  1.21(n).

(d) If an application filed pursuant to paragraph (b) of this section is
otherwise complete, but does not include the appropriate filing fee or a
true copy of the oath or declaration from the prior complete
application, showing the signature or an indication it was signed, a
filing date will be granted and applicant will be so notified and given
a period of time within which to file the fee, or the true copy of the
oath or declaration and to pay the surcharge as set forth in Section 
1.16(e) in order to prevent abandonment of the application. The
notification pursuant to this paragraph may be made simultaneously with
any notification pursuant to paragraph(c) of this section.

 37 CFR 1.60 PRACTICE

The  37 CFR 1.60 practice was developed to provide a procedure for
filing a continuation or divisional application where hardships existed
in obtaining the signature of the inventor on such an application during
the pendency of the prior nonprovisional application. It is suggested
that the use of the  37 CFR 1.60 practice be limited to such instances
in view of the additional work required by the Office to enter
preliminary amendments. If no hardship exists in obtaining the signature
of the inventor, the application should be filed under  37 CFR
1.53(b)(1) not under  37 CFR 1.60. It is pointed out that a continuation
or divisional application may be filed under  37 CFR 1.53(b)(1),  37 CFR
1.60, or  37 CFR 1.62.  37 CFR 1.60 or  37 CFR 1.62 practice may not be
used when filing an application where the immediate prior application
was a provisional application under  35 U.S.C. 119(e).

37 CFR 1.60 practice permits persons having authority to prosecute a
prior copending nonprovisional application to file a continuation or
divisional application without requiring the inventor to again execute
an oath or declaration under  35 U.S.C. 115, if the continuation or
divisional application is an exact copy of the prior nonprovisional
application as executed and filed. It is not necessary to file a new
oath or declaration which includes a reference to the nonfiling of an
application for an inventor's certificate in  37 CFR 1.60 applications
filed after May 1, 1975. Likewise, it is not necessary to have the
inventor sign a new oath or declaration merely to include a reference to
the duty of disclosure if the parent application was filed prior to
January 1, 1978, or to indicate that the inventor has reviewed and
understands the contents of the application if the parent application
was filed prior to October 1, 1983.

Where the immediate prior nonprovisional application was not signed (for
example, where it was filed under the former  37 CFR 1.147 or current 
37 CFR 1.60 or  37 CFR 1.62 practice), a copy of the most recent
nonprovisional application having a signed oath or declaration in the
chain of copending prior nonprovisional applications under  35 U.S.C.
120 must be used.

The basic concept of  37 CFR 1.60 practice is that since the inventor
has already made the affirmation required by  35 U.S.C. 115, it is not
necessary to make another affirmation in a later application that
discloses and claims only the same subject matter. It is for this reason
that a  37 CFR 1.60 application must be an exact duplicate of an earlier
nonprovisional application executed by the inventor. It is permissible
to retype pages to provide clean copies.

 37 CFR 1.60 APPLICATION CONTENT

As mentioned previously, a  37 CFR 1.60 application must consist of a
copy of an executed nonprovisional application as filed (specification,
claims, drawings, and oath or declaration). The application must also
include a clear indication that a filing under  37 CFR 1.60 is desired.
The use of transmittal form PTO/SB/13 is urged since it acts as a
checklist for both applicant and the Office and includes a specific
request for an application under  37 CFR 1.60. If an application is
filed under  37 CFR 1.60, all requirements of that rule must be met.

Although a copy of all original claims in the prior nonprovisional
application must appear in the  37 CFR 1.60 application, some of the
claims may be canceled by request in the  37 CFR 1.60 application in
order to reduce the filing fee (see form PTO/SB/13, item 5).  Any
preliminary amendment presenting additional claims (claims not in the
prior application as filed) should accompany the request for filing an
application under  37 CFR 1.60, but such an amendment will not be
entered until after the filing date has been granted. Any claims added
by amendment should be numbered consecutively beginning with the number
next following the highest numbered original claim in the prior executed
nonprovisional application. The Office of Initial Patent Examination
should not review preliminary amendments (in the transmitted letter or
separate paper accompanying the application) for evidence of missing
claims in applications filed under  37 CFR 1.60.  Any errors in the
numbering of claims in preliminary amendment(s) can be corrected in the
examining groups. Amendments made in the prior nonprovisional
application do not carry over into the  37 CFR 1.60 application. Any
preliminary amendment should accompany the  37 CFR 1.60 application and
be directed to "the accompanying  37 CFR 1.60 application" and not to
the prior nonprovisional application. Applicants should submit
preliminary amendments on filing or promptly thereafter to assure
examiner consideration when the  37 CFR 1.60 application is picked up
for examination. 

All application copies must comply with  37 CFR 1.52 and must be on
paper which permits entry of amendments thereon in ink. 

A copy of the nonprovisional application must be prepared and submitted
by the applicant, or his or her attorney or agent, and include a
statement that it is a true copy. The copy of the oath or declaration
need not show a copy of the inventor's or notary's signature provided
that all other data is shown and an indication is made on the oath or
declaration that the oath or declaration has been signed. For example,
if the inventor's or notary's signature is not shown on the copy of the
oath or declaration, the notation "/s/" may be added to the copy of the
oath or declaration on the line provided for the signature to indicate
that the original oath or declaration was signed. 

In order to obtain a filing date under  37 CFR 1.60 a copy of all pages
of the application, including description, claims, any drawings, and the
statement that the application papers are a true copy of the prior
application are required to be submitted. If all these items are not
submitted, remedy is by way of petition under  37 CFR 1.60(b) and
payment of the fee under  37 CFR 1.17(i). Paragraph (d) of  37 CFR 1.60
which was added effective Jan. 4, 1993, provides for the filing fee
and/or true copy of the oath or declaration from the prior
nonprovisional application to be filed on a date later than the filing
date with payment of the surcharge set forth in  37 CFR 1.16(e).

Claims for priority rights under  35 U.S.C. 119(a)-(d) must be made in 
37 CFR 1.60 applications if it is desired to have the foreign priority
data appear on the issued patent. In re Van Esdonk, 187 USPQ 671 (Comm'r
Pat. 1975). Reference should be made to certified copies filed in a
prior application if reliance thereon is made.

If the claims presented by amendment in a  37 CFR 1.60 application are
directed to matter shown and described in the prior nonprovisional
application but not substantially embraced in the statement of invention
or claims originally presented, the applicant should file a supplemental
oath or declaration under  37 CFR 1.67 as promptly as possible.

In view of the fact that  37 CFR 1.60 applications are limited to
continuations and divisions, no new matter may be introduced in a  37
CFR 1.60 application,  35 U.S.C. 132. Continuation-in-part applications
may only be filed under  37 CFR 1.53(b)(1) or  37 CFR 1.62. 

A statement to the effect that the submitted copy is believed to be a
true copy of the prior nonprovisional application as filed to the best
of his or her information and belief is sufficient, if an explanation is
made as to why the statement must be based only on belief.

If the  37 CFR 1.60 application is being filed by less than all the
inventors named in the prior nonprovisional application, a statement
must accompany the application, when it is filed, requesting deletion of
the names of the person or persons who are not inventors of the
invention being claimed in the  37 CFR 1.60 application. For example,
this situation could occur when a divisional application is being filed
directed to one of the inventions disclosed and claimed in the prior
nonprovisional application. No petition under  37 CFR 1.48 for
correction of inventorship is required when filing under  37 CFR 1.60
unless there was an error in the omission of a named inventor in the
prior nonprovisional application which was not corrected prior to the
filing of the  37 CFR 1.60 application. 

If the inventorship shown on the original oath or declaration has been
changed and approved during the prosecution of the prior nonprovisional
application, the  37 CFR 1.60 application papers must indicate such a
change has been made and approved by providing a copy of the petition
for correction of inventorship under  37 CFR 1.48 in order that the
changed inventorship may be indicated in the  37 CFR 1.60 application.
The  37 CFR 1.60 application papers should also include any additions or
changes in an inventor's citizenship, residence or post office address
made and approved in the prior nonprovisional application.

If small entity status has been established in a parent application, it
is not necessary to again file a statement under  37 CFR 1.27 if the
small entity status is desired in a  37 CFR 1.60 application. The  37
CFR 1.60 application must, however, include a reference to the statement
in the parent application if the small entity, status is still proper
and desired (37 CFR 1.28(a)).

If the parent application was filed by other than the inventor under  37
CFR 1.47, a copy of all the petition papers filed under  37 CFR 1.47
must also be filed.

FORMAL DRAWINGS REQUIRED

Formal drawings are required in  37 CFR 1.60 applications as in other
applications. A request to transfer drawings from a prior nonprovisional
application does not relieve the applicant from the obligation to file a
copy of the drawings originally filed in the prior nonprovisional
application. If informal drawings are filed with the application papers,
the examiner should use Form Paragraph 2.02 for formal drawing
requirement.

2.02 Former 37 CFR 1.60, Drawing Requirement

This application, filed under former  37 CFR 1.60, lacks formal
drawings. The informal drawings filed in this application are acceptable
for examination purposes.  When the application is allowed, applicant
will be required to submit new formal drawings.  In unusual
circumstances, the formal drawings from the abandoned parent application
may be transferred by the grant of a petition under  37 CFR 1.182.

Examiner Note:

This form paragraph is to be used only when the parent application
contains approved formal drawings and has been abandoned.

Any drawing corrections requested but not made in the prior
nonprovisional application should be repeated in the  37 CFR 1.60
application if such changes are still desired.

Use Form Paragraph 2.04 for instructions to applicant where drawing
corrections have been requested in the parent application.

2.04 Correction of Drawings in Former 37 CFR 1.60 Cases

The drawings in this application are objected to by the Draftsperson as
informal.  Any drawing corrections requested, but not made in the prior
application, should be repeated in this application if such changes are
still desired.  If the drawings were changed and approved during the
prosecution of the prior application, a petition may be filed under  37
CFR 1.182 requesting the transfer of such drawings, provided the parent
application has been abandoned.  However, a copy of the drawings as
originally filed must be included in the  37 CFR 1.60 application papers
to indicate the original content.

Examiner Note:

Use form paragraphs 6.39 and 6.40 with this paragraph.

COPIES OF AFFIDAVITS

Affidavits and declarations, such as those under  37 CFR 1.131 and  37
CFR 1.132 filed during the prosecution of the prior nonprovisional
application do not automatically become a part of the  37 CFR 1.60
application. Where it is desired to rely on an earlier filed affidavit,
the applicant should make such remarks of record in the  37 CFR 1.60
application and include a copy of the original affidavit filed in the
prior nonprovisional application.

Use Form Paragraph 2.03 for instructions to applicant concerning
affidavits and declarations in the parent application.

2.03 Affidavits or Declarations in Parent Application

Applicant refers to an affidavit or declaration filed in the parent
application.  Affidavits or declarations, such as those submitted under 
37 CFR 1.131 and  37 CFR 1.132, filed during the prosecution of the
parent application do not automatically become a part of this
application.  Where it is desired to rely on an earlier filed affidavit
or declaration, the applicant should make the remarks of record in the
later application and include a copy of the original affidavit or
declaration filed in the parent application.

Examiner Note:

This form paragraph is to be used in applications filed under  37 CFR
1.53(b) and former  37 CFR 1.60.  Do not use this paragraph in
applications filed under  37 CFR 1.53(d) and former  37 CFR 1.62
applications, since affidavits and/or declarations, such as those
submitted under  37 CFR 1.131 and  37 CFR 1.132 filed during the
prosecution of the parent nonprovisional application automatically
become a part of the  37 CFR 1.53(d) and former  37 CFR 1.62
applications.

ABANDONMENT OF THE PRIOR NONPROVISIONAL APPLICATION

Under  37 CFR 1.60 practice the prior nonprovisional application is not
automatically abandoned upon filing of the  37 CFR 1.60 application. If
the prior nonprovisional application is to be expressly abandoned, such
a paper must be signed in accordance with  37 CFR 1.138. A registered
attorney or agent not of record acting in a representative capacity
under  37 CFR 1.34(a) may also expressly abandon a prior nonprovisional
application as of the filing date granted to a continuing application
when filing such a continuing application.

If the prior nonprovisional application which is to be expressly
abandoned has a notice of allowance issued therein, the prior
nonprovisional application can become abandoned by the nonpayment of the
issue fee. However, once an issue fee has been paid in the prior
application, even if the payment occurs following the filing of a
continuation application under  37 CFR 1.60, a petition to withdraw the
prior nonprovisional application from issue must be filed before the
prior nonprovisional application can be abandoned (37 CFR 1.313).

If the prior nonprovisional application which is to be expressly
abandoned is before the Board of Patent Appeals and Interferences, a
separate notice should be forwarded by the applicant to such Board,
giving notice thereof.

After a decision by the Court of Appeals for the Federal Circuit (CAFC)
in which the rejection of all claims is affirmed, proceedings are
terminated on the date of receipt of the Court's certified copy of the
decision by the Patent and Trademark Office. Continental Can Company,
Inc., v. Schuyler, 168 USPQ 625 (D.D.C. 1970).  See MPEP Section 
1216.01.

EXAMINATION

The practice relating to making first action rejections final applies
also to  37 CFR 1.60 applications.  See MPEP Section  706.07(b).

Any preliminary amendment filed with a  37 CFR 1.60 application which is
to be entered after granting of the filing date should be entered by the
technical support staff of the examining group where the application is
finally assigned to be examined. Any errors in the numbering of claims
in preliminary amendment(s) can be corrected in the examining groups.
Accordingly, these applications should be classified and assigned to the
proper examining group by taking into consideration the claims that will
be before the examiner upon entry of such a preliminary amendment.

If the examiner finds that a filing date has been granted erroneously
because the application was incomplete, e.g., pages of specification
missing or drawing sheets missing, the application should be returned to
the Office of Initial Patent Examination (OIPE) via the Office of
Petitions.

Form PTO/SB/13 is designed as an aid for use by both applicant and the
Patent and Trademark Office and should simplify filing and processing of
applications under  37 CFR 1.60.

Form PTO/SB/13 Request For Filing A Patent Application Under 37 CFR
1.60.[GRAPHIC]

[GRAPHIC]

---SECTION---201.06(b) Former 37 CFR 1.62 File Wrapper Continuing
Procedure

[Note: 37 CFR 1.62 was deleted effective December 1, 1997.  See 1203
O.G. 63, October 21, 1997.  A continuation or divisional application
filed under former  37 CFR 1.62 on or after December 1, 1997, will be
treated as an application filed under  37 CFR 1.53(d).  If the
application filed on or after December 1, 1997, under former  37 CFR
1.62 is a continuation-in-part (CIP) application, the application will
be treated as an improper application.  In which case, the applicant
will be notified and given an opportunity to file a petition under  37
CFR 1.53(e) to have the application converted to an application filed
under  37 CFR 1.53(b).

A petition under  37 CFR 1.53(e) to accept and treat an improper
application filed under former  37 CFR 1.62 as a proper application
filed under  37 CFR 1.53(b) must include:  (1) the $130.00 petition fee;
(2) a true copy of the complete nonprovisional application, as filed,
designated as the prior nonprovisional application in the application
papers filed under former  37 CFR 1.62; (3) any amendments entered in
the prior nonprovisional application; (4) any amendments submitted but
not entered in the prior nonprovisional application and directed to be
entered in the application papers filed under former  37 CFR 1.62; and
(5) an executed oath or declaration under  37 CFR 1.63, if one has not
already been submitted with the application papers filed under former 
37 CFR 1.62.

All continuation, divisional and CIP applications filed under former  37
CFR 1.62 prior to December 1, 1997, will continue to be processed and
examined under the procedures set forth in former  37 CFR 1.62.  Thus,
the following discussion of former  37 CFR 1.62 practice is being
retained in the MPEP and all references to the rules in this section are
directed to the rules that were in effect prior to December 1, 1997.]

37 CFR 1.62 File wrapper continuing procedure

(a) A continuation, continuation-in-part, or divisional application,
which uses the specification, drawings and oath or declaration from a
prior nonprovisional application which is complete as defined by Section 
1.51(a)(1), and which is to be abandoned, may be filed under this
section before the payment of the issue fee, abandonment of, or
termination of proceedings on the prior application, or after payment of
the issue fee if a petition under Section  1.313(b)(5) is granted in the
prior application. The filing date of an application filed under this
section is the date on which a request is filed for an application under
this section including identification of the application number and the
names of the inventors named in the prior complete application. If the
continuation, continuation-in-part, or divisional application is filed
by less than all the inventors named in the prior application a
statement must accompany the application when filed requesting deletion
of the names of the person or persons who are not inventors of the
invention being claimed in the continuation, continuation-in-part, or
divisional application.

(b) The filing fee for a continuation, continuation-in-part, or
divisional application under this section is based on the number of
claims remaining in the application after entry of any preliminary
amendment and entry of any amendments under Section  1.116 unentered in
the prior application which applicant has requested to be entered in the
continuing application.

(c) In the case of a continuation-in-part application which adds and
claims additional disclosure by amendment, an oath or declaration as
required by Section  1.63 must also be filed. In those situations where
a new oath or declaration is required due to additional subject matter
being claimed, additional inventors may be named in the continuing
application. In a continuation or divisional application which discloses
and claims only subject matter disclosed in a prior application, no
additional oath or declaration is required and the application must name
as inventors the same or less than all the inventors named in the prior
application.

(d) If an application which has been accorded a filing date pursuant to
paragraph (a) of this section does not include the appropriate basic
filing fee pursuant to paragraph (b) of this section, or an oath or
declaration by the applicant in the case of a continuation-in-part
application pursuant to paragraph (c) of this section, applicant will be
so notified and given a period of time within which to file the fee,
oath, or declaration and to pay the surcharge as set forth in Section 
1.16(e) in order to prevent abandonment of the application. The
notification pursuant to this paragraph may be made simultaneously with
any notification of a defect pursuant to paragraph (a) of this section.

(e) An application filed under this section will utilize the file
wrapper and contents of the prior application to constitute the new
continuation, continuation-in-part, or divisional application but will
be assigned a new application number. Changes to the prior application
must be made in the form of an amendment to the prior application as it
exists at the time of filing the application under this section. No copy
of the prior application or new specification is required. The filing of
such a copy or specification will be considered improper, and a filing
date as of the date of deposit of the request for an application under
this section will not be granted to the application unless a petition
with the fee set forth in Section  1.17(i) is filed with instructions to
cancel the copy or specification.

(f) The filing of an application under this section will be construed to
include a waiver of confidence by the applicant under  35 U.S.C. 122 to
the extent that any member of the public who is entitled under the
provisions of  37 CFR 1.14 to access to, or information concerning
either the prior application or any continuing application filed under
the provisions of this section may be given similar access to, or
similar information concerning, the other application(s) in the file
wrapper.

(g) The filing of a request for a continuing application under this
section will be considered to be a request to expressly abandon the
prior application as of the filing date granted the continuing
application.

(h) The applicant is urged to furnish the following information relating
to the prior and continuing applications to the best of his or her
ability:

(1) Title as originally filed and as last amended;

(2) Name of applicant as originally filed and as last amended;

(3) Current correspondence address of applicant;

(4) Identification of prior foreign application and any priority claim
under  35 U.S.C. 119.

(5) The title of the invention and names of the applicants to be named
in the continuing application.

(i) Envelopes containing only application papers and fees for filing
under this section should be marked "Box FWC".

(j) If any application filed under this section is found to be improper,
the applicant will be notified and given a time period within which to
correct the filing error in order to obtain a filing date as of the date
the filing error is corrected provided the correction is made before the
payment of the issue fee, abandonment of, or termination of proceedings
on the prior application. If the filing error is not corrected within
the time period set, the application will be returned or otherwise
disposed of; the fee, if submitted, will be refunded less the handling
fee set forth in Section  1.21(n).

An applicant may file a continuation or division of a pending patent
application by simply filing a request therefor under  37 CFR 1.62
identifying the Application No. (series code and serial number) of the
prior complete nonprovisional application and paying the necessary
application filing fee. The filing of a copy of the prior nonprovisional
application (required under  37 CFR 1.60) is unnecessary and improper
under the procedure set forth in  37 CFR 1.62. To file a
continuation-in-part application, an amendment (not a new specification)
adding the additional subject matter and an oath or declaration relating
thereto are also required.

A request for an FWC application under  37 CFR 1.62 may be signed by a
registered practitioner acting in a representative capacity under  37
CFR 1.34(a). However, correspondence concerning the continuing
application will be sent by the Office to the correspondence address as
it appears on the prior nonprovisional application until a new power of
attorney, or change of correspondence address signed by an attorney or
agent of record in the prior application, is filed in the FWC.

The "file wrapper continuing" (FWC) procedure is set forth in  37 CFR
1.62. Under this simplified procedure, any continuing application such
as a continuation, continuation-in-part, or divisional application may
be filed. The papers in the copending prior nonprovisional application,
which application will become automatically expressly abandoned will be
used and any changes thereto desired when filing the FWC application
must be made by amendment. Under the FWC procedure, a new application
number is assigned and the specification, drawings, and other papers in
the parent application file wrapper are used as the papers in the
continuing application. Changes in inventorship may be made. The "file
wrapper continuing" (FWC) procedure is available for utility, design,
plant, and reissue applications to file continuing applications of the
same type (utility, design, plant, reissue) as the parent application.
An application which claims the benefits of a provisional application
may not be filed under the provisions of  37 CFR 1.62. Use of the FWC
procedure will automatically result in express abandonment of the prior
nonprovisional application as of the filing date accorded the
continuation, continuation-in-part, or divisional application.

The FWC procedure can be used for any continuation,
continuation-in-part, or divisional application provided the applicant
wishes the copending prior nonprovisional application to become
abandoned.  If a continuation or divisional application is desired
without abandonment of the parent application, the procedure under  37
CFR 1.60 should be used. Applicant also has the option of filing new
application papers with a reexecuted oath or declaration under  37 CFR
1.53(b)(1).

Under  37 CFR 1.62, the specification, claims, and drawings, and any
amendments in the prior nonprovisional application are used in the
continuation, continuation-in-part, or divisional application. A new
filing fee is required in accordance with  35 U.S.C. 41 and  37 CFR
1.16. The only other statutory requirement under  35 U.S.C. 111(a) is a
signed oath or declaration.  Since a continuation or divisional
application cannot contain new matter, the oath or declaration filed in
the prior nonprovisional application would supply all the information
required under the statute and rules to have a complete application and
to obtain a filing date. Accordingly, the previously filed oath or
declaration will be considered to be the oath or declaration of the  37
CFR 1.62 continuation or division. However, if a continuation-in-part
application is being filed, or a correction of inventorship is being
made, then a new oath or declaration must be signed and filed by the
applicant.

The original disclosure of an application filed under  37 CFR 1.62 will
be the original parent application, amendments entered in the parent
application, and amendments filed on the filing date and referred to in
the oath or declaration by the inventor(s). However, the filing fee will
be based on the claims in the  37 CFR 1.62 application after entry of
any unentered amendments under  37 CFR 1.116 in the prior application
whose entry has been requested by the applicant and any preliminary
amendment which may accompany the FWC request and filing fee. The
Certificate of Mailing Procedure under  37 CFR 1.8 does not apply to
filing a request for a "File Wrapper Continuing" application since the
filing of such a request is considered to be a filing of national
application papers for the purpose of obtaining an application filing
date (37 CFR 1.8(a)(i)).

The applicant may file a signed FWC request and the regular filing fee
under  37 CFR 1.16 and other necessary papers with the Patent and
Trademark Office, either by mail addressed to "Box FWC" or in person
with the Customer Service Center. An individual check or deposit account
authorization should accompany each FWC application, since combined
checks delay processing.

The Mail Center sorts out all "Box FWC" envelopes upon receipt and
delivers them to a reader for prompt special handling. The reader
applies the "Mail Room" date stamp and marks the categories of the fees.
The papers for each FWC application are assigned a regular national
application number and placed in a "Jumbo" size file wrapper. The
Special Handling Branch reviews the FWC request for accuracy and
completeness and assigns the filing date if everything appears to be in
order.  There is no need for any processing of the FWC application by
the Initial Patent Examination Division of the Office of Initial Patent
Examination (OIPE) since there are no papers to be examined and the FWC
application is routed to the group assigned the prior nonprovisional
application. When the FWC application file wrapper is received in the
examining group, the parent application is promptly obtained and
processed by a technical support staff member.

All of the correspondence from the Office in a FWC application refers to
the FWC application number and filing date and is processed in the same
manner as any other continuation, continuation-in-part or divisional
application. The first action final rejection procedures set forth in
MPEP Section  706.07(b) apply to FWC applications filed under  37 CFR
1.62. The PALM system can supply information to authorized persons as to
the location of the parent application file wrapper and ties the parent
application number to the FWC application number.

The provisions of  37 CFR 1.62 provide that if any application in the
file wrapper is available to the public that all applications in the
file wrapper will be available to the public.

Paragraph (a) of  37 CFR 1.62 sets forth the minimum requirements for
obtaining a filing date. Paragraphs (b) and (c) of  37 CFR 1.62 set
forth the filing fee and oath or declaration requirements. Paragraph
1.62(d) relates to later filing of the filing fee or oath or declaration
as provided for in  35 U.S.C. 111(a).

EXTENSIONS OF TIME

If an extension of time is necessary to establish continuity between the
prior application and the FWC application, the petition for extension of
time must be filed as a separate paper directed to the prior
nonprovisional application. A general authorization to charge fees to a
deposit account filed in the FWC application will not be construed as a
petition for extension of time in the prior application.  See In re
Kokaji, 2 USPQ2d 1309 (Comm'r Pat. 1987). Any petition for extension of
time directed to the prior application must be accompanied by its own
certificate of mailing under  37 CFR 1.8 (if mailed by first class mail
(including "Priority Mail" and "Express Mail"); see MPEP Section  512)
or should have the "Express Mail" mailing label number in accordance
with  37 CFR 1.10 (if mailed by "Express Mail"; see MPEP Section  513),
if the benefits of those rules are desired. For the purposes of  37 CFR
1.8(a)(1)(i)(A), first class mail is interpreted as including "Express
Mail" and "Priority Mail" deposited with the USPS. 

CERTIFIED COPY

A certified copy of a continuation-in-part application filed under  37
CFR 1.62 will be prepared by the Certification Branch upon request. The
certified copy will consist of a copy of the prior complete application
as filed, all amendments entered in the prior application as of the FWC
filing date, any amendment filed with the request for a
continuation-in-part application under  37 CFR 1.62, any unentered
amendment under  37 CFR 1.116 in the prior application whose entry was
requested by the applicant in the FWC application, and the oath or
declaration under  37 CFR 1.63 filed to complete the FWC application.

SMALL ENTITY STATUS

If small entity status was established in the parent application of an
application filed under  37 CFR 1.62, and such status is desired and
proper in a  37 CFR 1.62 application, it is not necessary that a new
statement under  37 CFR 1.27 be filed but rather reference may be made
to the statement filed in the parent application.

PRIORITY CLAIM

Claims under  35 U.S.C. 119(a)-(d) and 120 for the benefit of the filing
dates of earlier applications in a parent application will automatically
carry over to an application filed under  37 CFR 1.62. Applicants are
encouraged to repeat and update such claims at the time of filing a  37
CFR 1.62 application so that such claims will not be overlooked. A
member of the technical support staff should check if priority data has
been entered on the file wrapper.

Form Paragraph 2.28 may be used to remind applicant to insert parent
application data.

2.28 Reference in Former 37 CFR 1.62 Continuing Applications

This application filed under former  37 CFR 1.62 lacks the necessary
reference to the prior application.  A statement reading "This is a [1]
of Application No.   [2], filed [3]." should be entered following the
title of the invention or as the first sentence of the specification. 
Also, the current status of the nonprovisional parent application(s)
should be included.

Examiner Note:

1. In bracket 1, insert --division--, --continuation--, or
--continuation-in-part--.

2. Use only in "file wrapper continuing" applications under former  37
CFR 1.62.

Form PTO/SB/14 is designed as an aid for use by applicant for filing an
application under  37 CFR 1.62.

Form PTO/SB/14. Request Form for Filing a Patent Application under 37
CFR 1.62.[GRAPHIC]

[GRAPHIC]

---SECTION---201.06(c) 37 CFR 1.53(b) and 37 CFR 1.63(d)
Divisional-Continuation Procedure

37 CFR 1.53 Application number, filing date, and completion of
application.

                  +++    

(b) Application filing requirements - Nonprovisional application.  The
filing date of an application for patent filed under this section,
except for a provisional application under paragraph (c) of this section
or a continued prosecution application under paragraph (d) of this
section, is the date on which a specification as prescribed by  35
U.S.C. 112 containing a description pursuant to Section  1.71 and at
least one claim pursuant to Section  1.75, and any drawing required by
Section  1.81(a) are filed in the Patent and Trademark Office.  No new
matter may be introduced into an application after its filing date. A
continuing application, which may be a continuation, divisional, or
continuation-in-part application, may be filed under the conditions
specified in  35 U.S.C. 120, 121 or 365(c) and Section  1.78(a).

(1) A continuation or divisional application that names as inventors the
same or fewer than all of the inventors named in the prior application
may be filed under this paragraph or paragraph (d) of this section.

(2) A continuation-in-part application (which may disclose and claim
subject matter not disclosed in the prior application) or a continuation
or divisional application naming an inventor not named in the prior
application must be filed under this paragraph.

                  +++    

37 CFR 1.63 Oath or Declaration.

                  +++    

(d)(1) A newly executed oath or declaration is not required under
Section  1.51(b)(2) and Section  1.53(f) in a continuation or divisional
application, provided that:

(i) The prior nonprovisional application contained an oath or
declaration as prescribed by paragraphs (a) through (c) of this section;

(ii) The continuation or divisional application was filed by all or by
fewer than all of the inventors named in the prior application;

(iii) The specification and drawings filed in the continuation or
divisional application contain no matter that would have been new matter
in the prior application; and

(iv) A copy of the executed oath or declaration filed in the prior
application, showing the signature or an indication thereon that it was
signed, is submitted for the continuation or divisional application.

(2) The copy of the executed oath or declaration submitted under this
paragraph for a continuation or divisional application must be
accompanied by a statement requesting the deletion of the name or names
of the person or persons who are not inventors in the continuation or
divisional application.

(3) Where the executed oath or declaration of which a copy is submitted
for a continuation or divisional application was originally filed in a
prior application accorded status under Section  1.47, the copy of the
executed oath or declaration for such prior application must be
accompanied by:

(i) A copy of the decision granting a petition to accord Section  1.47
status to the prior application, unless all inventors or legal
representatives have filed an oath or declaration to join in an
application accorded status under Section  1.47 of which the
continuation or divisional application claims a benefit under  35 U.S.C.
120, 121, or 365(c); and

(ii) If one or more inventor(s) or legal representative(s) who refused
to join in the prior application or could not be found or reached has
subsequently joined in the prior application or another application of
which the continuation or divisional application claims a benefit under 
35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed
oath(s) or declaration(s) filed by the inventor or legal representative
to join in the application.

(4) Where the power of attorney (or authorization of agent) or
correspondence address was changed during the prosecution of the prior
application, the change in power of attorney (or authorization of agent)
or correspondence address must be identified in the continuation or
divisional application.  Otherwise, the Office may not recognize in the
continuation or divisional application the change of power of attorney
(or authorization of agent) or correspondence address during the
prosecution of the prior application.

(5) A newly executed oath or declaration must be filed in a continuation
or divisional application naming an inventor not named in the prior
application.

                  +++    

IN GENERAL

37 CFR 1.53(b) is the section under which all applications are filed
EXCEPT: (1) an application resulting from entry of an international
application into the national stage under  35 U.S.C. 371 and  37 CFR
1.494 or  37 CFR 1.495; (2) a provisional application under  35 U.S.C.
111(b) and  37 CFR 1.53(c); or (3) a continued prosecution application
(CPA) under  37 CFR 1.53(d).  Applications submitted under  37 CFR
1.53(b), as well as CPAs submitted under  37 CFR 1.53(d), are
applications filed under  35 U.S.C. 111(a).  An application filed under 
37 CFR 1.53(b) may be an original, a continuation, a divisional, a
continuation-in-part, or a substitute. (See MPEP Section  201.09 for
substitute application.) The application may be for a "utility" patent
under  35 U.S.C. 101, a design patent under  35 U.S.C. 171, a plant
patent under  35 U.S.C. 161, or a reissue under  35 U.S.C. 251.

37 CFR 1.53(b) is the "default" application.  An application that is not
(1) the result of the entry of an international application into the
national stage after compliance with  35 U.S.C. 371 and  37 CFR 1.494 or 
37 CFR 1.495, (2) a provisional application under  37 CFR 1.53(c), or
(3) a CPA under  37 CFR 1.53(d), is an application filed under  37 CFR
1.53(b).  An application will be treated as one filed under  37 CFR
1.53(b) unless otherwise designated.

In order to be complete for filing date purposes, all applications filed
under  37 CFR 1.53(b) must include a specification as prescribed by  35
U.S.C. 112 containing a description pursuant to  37 CFR 1.71 and at
least one claim pursuant to  37 CFR 1.75, and any drawing required by 
37 CFR 1.81(a).  The statutory filing fee and an oath or declaration in
compliance with  37 CFR 1.63 (and  37 CFR 1.175 (if a reissue) or  37
CFR 1.162 (if for a plant patent)) are also required by  37 CFR 1.51(b)
for a complete application, but the filing fee and oath or declaration
may be filed after the application filing date upon payment of the
surcharge set forth in  37 CFR 1.16(e).  See  37 CFR 1.53(f).

Any application filed on or after December 1, 1997, which is identified
by the applicant as an application filed under  37 CFR 1.60 will be
processed as an application under  37 CFR 1.53(b) (using the copy of the
specification, drawings and signed oath/declaration filed in the prior
application supplied by the applicant).  Any submission of an
application including or relying on a copy of an oath or declaration
that would have been proper under  37 CFR 1.60 will be a proper filing
under  37 CFR 1.53(b).

A new application containing a copy of an oath or declaration under  37
CFR 1.63 referring to an attached specification is indistinguishable
from a continuation or divisional application containing a copy of an
oath or declaration from a prior application submitted pursuant to  37
CFR 1.63(d).  Unless an application is submitted with a statement that
the application is a continuation or divisional application, see  37 CFR
1.78(a)(2), the Office will process the application as a new
non-continuing application.  Applicants are advised to clearly designate
any continuation, divisional, or continuation-in-part application as
such to avoid the issuance of a filing receipt that does not indicate
that the application is a continuation, divisional, or
continuation-in-part.

OATH/DECLARATION

37 CFR 1.63(d) provides that a newly executed oath or declaration is not
required in a continuation or divisional application filed by all or by
fewer than all of the inventors named in a prior nonprovisional
application containing a signed oath or declaration as required by  37
CFR 1.63, provided that a copy of the signed oath or declaration filed
in the prior application is submitted for the continuation or divisional
application and the specification and drawings filed in the continuation
or divisional application do not contain any subject matter that would
have been new matter in the prior application.  The copy of the oath or
declaration must show the signature of the inventor(s) or contain an
indication thereon that the oath or declaration was signed (e.g., the
notation "/s/" on the line provided for the signature).

It is not necessary to have the inventor sign a new oath or declaration
merely to include a reference to the duty of disclosure if the parent
application was filed prior to January 1, 1978, to indicate that the
inventor has reviewed and understands the contents of the application if
the parent application was filed prior to October 1, 1983, or to
indicate the inventor's post office address if the parent application
was filed prior to December 1, 1997, and the inventor's post office
address is identified elsewhere in the application.

When a copy of an oath or declaration from a prior application is filed
in a continuation or divisional application under  37 CFR 1.53(b),
special care should be taken by the applicant to ensure that the copy is
matched with the correct application file.  Applicant should file the
copy of the oath or declaration with a cover letter explaining that the
copy of the oath or declaration is for the attached application or for a
previously-filed  37 CFR 1.53(b) application (identified by application
number which consists of a two-digit series code, e.g  ., 08/, and a
six-digit serial number, e.g., 123,456).  An adhesive label may be
attached to the front of the copy of the oath or declaration.  The label
should clearly state that the copy of the oath or declaration is
intended for the attached application submitted therewith or for
Application No. XX/YYY,YYY.  During initial processing, attachments
(e.g., a cover letter) to application papers may be separated. 
Therefore, applicant should not rely solely upon a cover letter. Note: 
37 CFR 1.5(a) states that no correspondence relating to an application
should be filed prior to receipt of the application number information
from the Patent and Trademark Office.

37 CFR 1.63(d) requires a copy of the signed oath or declaration from
the prior application.  In instances in which the oath or declaration
filed in the prior application is itself a copy of an oath or
declaration from a prior application, either a copy of the copy of the
oath or declaration in the prior application or a direct copy of the
original oath or declaration is acceptable, as both are a copy of the
oath or declaration in the prior application, see  37 CFR 1.4(d)(1)(ii).

The patent statute and rules of practice do not require that an oath or
declaration include a date of execution, and no objection should be made
to an oath or declaration because it lacks either a recent date of
execution or any date of execution.  The applicant's duty of candor and
good faith including compliance with the duty of disclosure requirements
of  37 CFR 1.56 is continuous and applies to the continuing application.

A newly executed oath or declaration is required in a continuation or
divisional application filed under  37 CFR 1.53(b) naming an inventor
not named in the prior application, and in a continuation-in-part
application.

SPECIFICATION AND DRAWINGS

A continuation or divisional application may be filed under  35 U.S.C.
111(a) using the procedures set forth in  37 CFR 1.53(b), by providing: 
(1) a copy of the prior application, including a copy of the signed oath
or declaration in such prior application, as filed; (2) a new
specification and drawings and a copy of the signed oath or declaration
as filed in the prior application provided the new specification and
drawings do not contain any subject matter that would have been new
matter in the prior application; or (3) a new specification and drawings
and a newly executed oath or declaration provided the new specification
and drawings do not contain any subject matter that would have been new
matter in the prior application.  If a continuation or divisional
application filed with a newly executed oath or declaration contains
subject matter that would have been new matter in the prior application,
the application will have to be amended to indicate that it is a
continuation-in-part application rather than a continuation or a
divisional application.  The specification and drawings of a
continuation or divisional application filed under  37 CFR 1.53(b) are
not limited to a reproduction or "true copy" of the prior application,
i.e., the applicant may revise the specification for clarity or
contextual purposes vis-&agrave;-vis the specification originally filed
in the prior application in the manner that an applicant may file a
substitute specification, see  37 CFR 1.125, or amend the drawings of an
application so long as it does not result in the introduction of new
matter.  It is the applicant's responsibility to review any new
specification or drawings submitted for a continuation or divisional
application under  37 CFR 1.53(b) and  37 CFR 1.63(d) to determine that
it contains no new matter.  An applicant is advised to simply file a
continuing application with a newly executed oath or declaration when it
is questionable as to whether the continuing application adds material
that would have been new matter if presented in the prior application. 
If one or more claims are allowed in the continuation or divisional
application which are directed to matter shown and described in the
prior nonprovisional application but not claimed in the prior
application, the applicant should be required to file a supplemental
oath or declaration under  37 CFR 1.67.

If the examiner determines that new matter is present relative to the
prior application, the examiner should notify the applicant in an Office
action (preferably the first Office action) that a new oath/declaration
along with a surcharge is required and that the application should be
redesignated as a continuation-in-part.

Since the specification and drawings of a continuation or divisional
application filed under  37 CFR 1.53(b) are not limited to a
reproduction or "true copy" of the prior application, the safeguard in
former  37 CFR 1.60(b) concerning the filing of an application lacking
all of the pages of the specification or sheets of drawings of the prior
application has not been retained in  37 CFR 1.53(b).  Nevertheless, an
applicant may incorporate by reference the prior application by
including, in the application-as-filed, a statement that such
specifically enumerated prior application or applications are "hereby
incorporated herein by reference."  The statement may appear in the
specification or in the application transmittal letter.  The inclusion
of this incorporation by reference of the prior application(s) will
permit an applicant to amend the continuing application to include any
subject matter in such prior application(s), without the need for a
petition.

INVENTORSHIP

To continue the practice in former  37 CFR 1.60(b)(4) of permitting the
filing of a continuation or divisional application by all or by fewer
than all of the inventors named in a prior application without a newly
executed oath or declaration,  37 CFR 1.63(d)(2) provides that the copy
of the oath or declaration submitted for a continuation or divisional
application under 1.53(b) and  37 CFR 1.63(d) must be accompanied by a
statement from applicant, applicant's representative or other authorized
party requesting the deletion of the names of the person or persons who
are not inventors in the continuation or divisional application.  Where
the continuation or divisional application and a copy of the oath or
declaration from the prior application are filed without a statement
from an authorized party requesting deletion of the names of any person
or persons named in the prior application, the continuation or
divisional application will be treated as naming as inventors the person
or persons named in the copy of the executed oath or declaration from
the prior application.  Accordingly, if a petition under  37 CFR 1.48(a)
or (c) was granted in the prior application, the oath or declaration
filed in a continuation or divisional application pursuant to  37 CFR
1.53(b) and  37 CFR 1.63(d) should be a copy of the oath or declaration
executed by the added inventor(s) filed in the prior application. The
statement requesting the deletion of the names of the person or persons
who are not inventors in the continuation or divisional application must
be signed by person(s) authorized pursuant to  37 CFR 1.33(b) to sign an
amendment in the continuation or divisional application.

A newly signed oath or declaration in compliance with  37 CFR 1.63 is
required where an inventor who was not named as an inventor in the
signed oath or declaration filed in the prior application is to be named
in a continuation or divisional application filed under  37 CFR 1.53(b).
The newly signed oath or declaration must be signed by all the
inventors.

RULE 47 ISSUES

37 CFR 1.63(d)(3) provides for the situation in which the executed oath
or declaration, of which a copy is submitted for a continuation or
divisional application, was originally filed in a prior application
accorded status under  37 CFR 1.47. 37 CFR 1.63(d)(3)(i) requires a copy
of any decision granting a petition to accord  37 CFR 1.47 status to
such application, unless all nonsigning inventor(s) or legal
representative (pursuant to  37 CFR 1.42 or 1.43) have filed an oath or
declaration to join in an application of which the continuation or
divisional application claims a benefit under  35 U.S.C. 120, 121 or
365(c).  Where one or more, but not all, nonsigning inventor or legal
representative (pursuant to  37 CFR 1.42 or 1.43) subsequently joins in
any application of which the continuation or divisional application
claims a benefit under  35 U.S.C. 120, 121 or 365(c),  37 CFR
1.63(d)(3)(ii) also requires a copy of any oath or declaration filed by
the inventor or legal representative who subsequently joined in such
application.

New continuation or divisional applications filed under  37 CFR 1.53(b)
which contain a copy of an oath or declaration that is not signed by one
of the inventors and a copy of the decision according  37 CFR 1.47
status in the prior application, should be given a "Rule 47" designation
on the file wrapper and forwarded by the Office of Initial Patent
Examination (OIPE) to the Office of Petitions before being forwarded to
the patent examining groups.  The Office of Petitions will inform the
nonsigning inventor of the filing of the continuation or divisional
application and will publish an announcement in the   Official Gazette.

CHANGE OF ATTORNEY/CORRESPONDENCE ADDRESS

37 CFR 1.63(d)(4) provides that where the power of attorney (or
authorization of agent) or correspondence address was changed during the
prosecution of the prior application, the change in power of attorney
(or authorization of agent) or correspondence address must be identified
in the continuation or divisional application.  Otherwise, the Office
may not recognize in the continuation or divisional application the
change of power of attorney (or authorization of agent) or
correspondence address which occurred during the prosecution of the
prior application.

SMALL ENTITY STATUS

If small entity status has been established in a parent application and
is still proper and desired in a continuation or divisional application
filed under  37 CFR 1.53(b), it is not necessary to file a new statement
under  37 CFR 1.27.  However, the  37 CFR 1.53(b) application must
include either (a) a reference to the statement filed in the prior
application or patent to be reissued (payment of the small entity basic
statutory filing fee will be treated as such a reference), or (b) a copy
of the statement filed in the prior application or in the patent to be
reissued.  See  37 CFR 1.28(a)(2).

COPIES OF AFFIDAVITS

Affidavits or declarations, such as those submitted under  37 CFR 1.130,
1.131 and 1.132 filed during the prosecution of the prior nonprovisional
application do not automatically become a part of a continuation or
divisional application filed under  37 CFR 1.53(b).  Where it is desired
to rely on an earlier filed affidavit or declaration, the applicant
should make such remarks of record in the  37 CFR 1.53(b) application
and include a copy of the original affidavit or declaration filed in the
prior nonprovisional application.

Use Form Paragraph 2.03 for instructions to applicant concerning
affidavits or declarations filed in the parent application.

2.03 Affidavits or Declarations in Parent Application

Applicant refers to an affidavit or declaration filed in the parent
application.  Affidavits or declarations, such as those submitted under 
37 CFR 1.131 and  37 CFR 1.132, filed during the prosecution of the
parent application do not automatically become a part of this
application.  Where it is desired to rely on an earlier filed affidavit
or declaration, the applicant should make the remarks of record in the
later application and include a copy of the original affidavit or
declaration filed in the parent application.

Examiner Note:

This form paragraph is to be used in applications filed under  37 CFR
1.53(b) and former  37 CFR 1.60.  Do not use this paragraph in
applications filed under  37 CFR 1.53(d) and former  37 CFR 1.62
applications, since affidavits and/or declarations, such as those
submitted under  37 CFR 1.131 and  37 CFR 1.132 filed during the
prosecution of the parent nonprovisional application automatically
become a part of the  37 CFR 1.53(d) and former  37 CFR 1.62
applications.

EXTENSIONS OF TIME

If an extension of time is necessary to establish continuity between the
prior application and the continuing application filed under  37 CFR
1.53(b), the petition for an extension of time must be filed as a
separate paper directed to the prior nonprovisional application.  Under 
37 CFR 1.136(a)(3), an authorization to charge all required fees, fees
under  37 CFR 1.17, or all required extension of time fees will be
treated as a constructive petition for an extension of time in any
concurrent or future reply requiring a petition for an extension of time
for its timely submission.  A continuing application filed under  37 CFR
1.53(b) is a new application which is assigned a new application number
and filing date and is placed in a new file wrapper maintained
separately from the file of the prior application.  The filing of a
continuing application is not a paper directed or placed in the file of
the prior application and is not a  "reply" to the last Office action in
the prior application.  Thus, a petition for an extension of time and
the fee set forth in  37 CFR 1.17 are required to be filed as a separate
paper in the prior application.  Any petition for an extension of time
directed to the prior application must be accompanied by its own
certificate of mailing under  37 CFR 1.8 (if mailed by first class mail)
or under  37 CFR 1.10 (if mailed by Express Mail), if the benefits of
those rules are desired.

ABANDONMENT OF THE PRIOR NONPROVISIONAL APPLICATION

Under  37 CFR 1.53(b) and  37 CFR 1.63(d) practice, the prior
nonprovisional application is not automatically abandoned upon filing of
the continuing application.  If the prior nonprovisional application is
to be expressly abandoned, such a paper must be signed in accordance
with  37 CFR 1.138.  A registered attorney or agent not of record acting
in a representative capacity under  37 CFR 1.34(a) may also expressly
abandon a prior nonprovisional application as of the filing date granted
to a continuing application when filing such a continuing application.

If the prior nonprovisional application which is to be expressly
abandoned has a notice of allowance issued therein, the prior
nonprovisional application can become abandoned by the nonpayment of the
issue fee.  However, once an issue fee has been paid in the prior
application, even if the payment occurs following the filing of a
continuing application under  37 CFR 1.53(b) and  37 CFR 1.63(d), a
petition to withdraw the prior nonprovisional application from issue
must be filed before the prior nonprovisional application can be
abandoned (37 CFR 1.313).

If the prior nonprovisional application which is to be expressly
abandoned is before the Board of Patent Appeals and Interferences, a
separate notice should be forwarded by the appellant to the Board,
giving them notice thereof.

After a decision by the Court of Appeals for the Federal Circuit (CAFC)
in which the rejection of all claims is affirmed, proceedings are
terminated on the date of receipt of the Court's certified copy of the
decision by the Patent and Trademark Office. Continental Can Company,
Inc. v. Schuyler, 326 F. Supp. 283, 168 USPQ 625 (D.D.C. 1970).  See
MPEP Section  1216.01.

EXAMINATION

The practice relating to making first action rejections final also
applies to continuation and divisional applications filed under  37 CFR
1.53(b) and  37 CFR 1.63(d). See MPEP Section  706.07(b).

Any preliminary amendment filed with a  37 CFR 1.53(b) application which
is to be entered after granting of the filing date should be entered by
the technical support personnel of the patent examining group where the
application is finally assigned to be examined.  Any errors in the
numbering of claims in preliminary amendment(s) can be corrected in the
patent examining groups.  Accordingly, these applications should be
classified and assigned to the proper patent examining group by taking
into consideration the claims that will be before the examiner upon
entry of such a preliminary amendment.

If the examiner finds that pages of the specification or drawings
figures described in the specification are missing and the application
is a continuation or divisional application filed under  37 CFR 1.53(b)
using a copy of the oath or declaration filed in the prior application
under  37 CFR 1.63(d), the examiner must check to determine whether the
continuation or divisional application, as originally filed, includes a
statement incorporating by reference the prior application(s).  The
statement may appear in the specification or in the application
transmittal letter. The inclusion of this incorporation by reference of
the prior application(s) will permit applicant to amend the continuation
or divisional application to include any subject matter in the prior
application(s) without the need for a petition.  If the continuation or
divisional application filed under  37 CFR 1.53(b) and  37 CFR 1.63(d)
does not include the incorporation by reference statement in the
application papers as originally filed and applicant has not been
informed of the omitted items, the application should be returned to
OIPE for mailing of a "Notice of Omitted Item(s)."

---SECTION---201.06(d) 37 CFR 1.53(d) Continued Prosecution Application
(CPA) Practice

37 CFR 1.53 Application number, filing date, and completion of
application.

                  +++    

(d) Application filing requirements - Continued prosecution
(nonprovisional) application. 

(1) A continuation or divisional application (but not a
continuation-in-part) of a prior nonprovisional application may be filed
as a continued prosecution application under this paragraph, provided
that:

(i) The prior nonprovisional application is either:

(A) Complete as defined by Section  1.51(b); or

(B) The national stage of an international application in compliance
with  35 U.S.C. 371; and

(ii) The application under this paragraph is filed before the earliest
of:

(A) Payment of the issue fee on the prior application, unless a petition
under Section  1.313(b)(5) is granted in the prior application;

(B) Abandonment of the prior application; or

(C) Termination of proceedings on the prior application.

(2) The filing date of a continued prosecution application is the date
on which a request on a separate paper for an application under this
paragraph is filed.  An application filed under this paragraph:

(i) Must identify the prior application;

(ii) Discloses and claims only subject matter disclosed in the prior
application;

(iii) Names as inventors the same inventors named in the prior
application on the date the application under this paragraph was filed,
except as provided in paragraph (d)(4) of this section;

(iv) Includes the request for an application under this paragraph, will
utilize the file jacket and contents of the prior application, including
the specification, drawings and oath or declaration from the prior
application, to constitute the new application, and will be assigned the
application number of the prior application for identification purposes;
and

(v) Is a request to expressly abandon the prior application as of the
filing date of the request for an application under this paragraph.

(3) The filing fee for a continued prosecution application filed under
this paragraph is:

(i) The basic filing fee as set forth in Section  1.16; and

(ii) Any additional Section  1.16 fee due based on the number of claims
remaining in the application after entry of any amendment accompanying
the request for an application under this paragraph and entry of any
amendments under Section  1.116 unentered in the prior application which
applicant has requested to be entered in the continued prosecution
application.

(4) An application filed under this paragraph may be filed by fewer than
all the inventors named in the prior application, provided that the
request for an application under this paragraph when filed is
accompanied by a statement requesting deletion of the name or names of
the person or persons who are not inventors of the invention being
claimed in the new application. No person may be named as an inventor in
an application filed under this paragraph who was not named as an
inventor in the prior application on the date the application under this
paragraph was filed, except by way of a petition under Section  1.48.

(5) Any new change must be made in the form of an amendment to the prior
application as it existed prior to the filing of an application under
this paragraph.  No amendment in an application under this paragraph (a
continued prosecution application) may introduce new matter or matter
that would have been new matter in the prior application. Any new
specification filed with the request for an application under this
paragraph will not be considered part of the original application
papers, but will be treated as a substitute specification in accordance
with Section  1.125.

(6) The filing of a continued prosecution application under this
paragraph will be construed to include a waiver of confidentiality by
the applicant under  35 U.S.C. 122 to the extent that any member of the
public, who is entitled under the provisions of Section  1.14 to access
to, copies of, or information concerning either the prior application or
any continuing application filed under the provisions of this paragraph,
may be given similar access to, copies of, or similar information
concerning the other application or applications in the file jacket.

(7) A request for an application under this paragraph is the specific
reference required by  35 U.S.C. 120 to every application assigned the
application number identified in such request.  No amendment in an
application under this paragraph may delete this specific reference to
any prior application.

(8) In addition to identifying the application number of the prior
application, applicant should furnish in the request for an application
under this paragraph the following information relating to the prior
application to the best of his or her ability:

(i) Title of invention;

(ii) Name of applicant(s); and

(iii) Correspondence address.

(9) Envelopes containing only requests and fees for filing an
application under this paragraph should be marked "Box CPA."  Requests
for an application under this paragraph filed by facsimile transmission
should be clearly marked "Box CPA."

                  +++    

IN GENERAL

In addition to the provisions of  37 CFR 1.53(b), a continuation or
divisional (but not a continuation-in-part) application may be filed
under  37 CFR 1.53(d).  A continuation or divisional application filed
under  37 CFR 1.53(d) is called a "Continued Prosecution Application" or
"CPA."  A CPA has a number of advantages compared to a continuation or
divisional application filed under  37 CFR 1.53(b).  For example, the
papers required to be filed in the Patent and Trademark Office in order
to secure a filing date under  37 CFR 1.53(d) are minimal compared to 
37 CFR 1.53(b).  In addition, the Office will not issue a new filing
receipt for a CPA.  See  37 CFR 1.54(b).  By not issuing a filing
receipt for a CPA, the Office will be able to perform the
pre-examination processing of any CPA in the patent examining group to
which the prior application was assigned.  A CPA may also be filed by
facsimile transmission or by hand-delivery directly to the patent
examining group to which the prior application was assigned.  The use of
these techniques for filing a CPA will avoid the delay inherent in
routing a new application from the Office of Initial Patent Examination
(OIPE) to the appropriate patent examining group.  As a result, the time
delay between the filing date and the first Office action should be less
for a CPA than for an application filed under  37 CFR 1.53(b).

A request for a CPA expressly abandons the prior application as of the
filing date of the request for the CPA.  See  37 CFR 1.53(d)(2)(v). 
Therefore, where the prior application is not to be abandoned, any
continuation or divisional application must be filed under  37 CFR
1.53(b).

The CPA procedure set forth in  37 CFR 1.53(d) is available for
"utility," design, plant, and reissue applications when filing either a
continuation or divisional application of the same type ("utility,"
design, plant, reissue) as the prior nonprovisional application.  Since
no new matter may be introduced in a CPA, the procedure set forth in  37
CFR 1.53(d) is not available for filing a continuation-in-part
application.  All continuation-in-part applications must be filed under 
37 CFR 1.53(b) and a newly executed oath or declaration is required.

Under the CPA procedure, the continuation or divisional application will
utilize the file wrapper and contents of the prior nonprovisional
application, including the specification, drawings and oath or
declaration from the prior nonprovisional application, and will be
assigned the same application number as the prior nonprovisional
application.  No filing receipt will be mailed by the Patent and
Trademark Office for the CPA.  Any changes to the continuation or
divisional application desired when filing the CPA must be made in the
form of an amendment to the prior application as it existed prior to
filing the CPA, see  37 CFR 1.53(d)(5).  Any new specification filed
with the CPA request will not be considered part of the original
application papers, but will be treated as a substitute specification in
accordance with  37 CFR 1.125. However, the applicant must comply with
the requirements of  37 CFR 1.125(b) before the substitute specification
will be entered into the CPA.

A CPA may be based on a prior CPA so long as the prior CPA is complete
under  37 CFR 1.51(b).  There is no limit to the number of CPAs that may
be filed in a chain of continuing applications.  However, only one CPA
may be pending at one time based on the same prior nonprovisional
application.

Under  37 CFR 1.53(d), the specification, claims, and drawings, and any
amendments entered in the prior nonprovisional application are used in
the CPA.  A new filing fee is required in accordance with  35 U.S.C. 41
and  37 CFR 1.16.  The only other statutory requirement under  35 U.S.C.
111(a) is a signed oath or declaration.  Since a CPA cannot contain new
matter, the oath or declaration filed in the prior nonprovisional
application would supply all the information required under the statute
and rules to have a complete application and to obtain a filing date. 
Accordingly, the previously filed oath or declaration will be considered
to be the oath or declaration of the CPA.

The original disclosure of a CPA is the same as the original disclosure
of the parent non-continued prosecution application and amendments
entered in the parent application(s).  However, any subject matter added
by amendment in the parent application which is deemed to be new matter
in the parent application will also be considered new matter in the CPA. 
No amendment filed in a CPA, even if filed on the filing date of the
CPA, may include new matter.

Envelopes containing only requests and fees for filing a CPA should be
marked "Box CPA" and requests for a CPA filed by facsimile transmission
should be clearly marked "Box CPA."  See  37 CFR 1.53(d)(9).

If application papers are in any way designated as a CPA filing under 
37 CFR 1.53(d) (e.g., contain a reference to  37 CFR 1.53(d), CPA, or
continued prosecution application), the application papers will be
treated by the Office as a CPA filed under  37 CFR 1.53(d), even if the
application papers also contain other inconsistent designations (e.g.,
if the papers are also designated as an application filed under  37 CFR
1.53(b)).

CONDITIONS FOR FILING A CPA

A continuation or divisional application may be filed under  37 CFR
1.53(d), if the prior nonprovisional application is either: (1) complete
as defined by  37 CFR 1.51(b); or (2) the national stage of an
international application in compliance with  35 U.S.C. 371. The term
"prior nonprovisional application" in  37 CFR 1.53(d)(1) means the
nonprovisional application immediately prior to the CPA. A complete
application as defined by  37 CFR 1.51(b) and a "national stage of an
international application in compliance with  35 U.S.C. 371" must each
contain, inter alia, the appropriate filing fee and a signed oath or
declaration under  37 CFR 1.63.

In addition, a continuation or divisional application filed under  37
CFR 1.53(d) must be filed before the earliest of:  (1) payment of the
issue fee on the prior application, unless a petition under  37 CFR
1.313(b)(5) is granted in the prior application; (2) abandonment of the
prior application; or (3) termination of proceedings on the prior
application.

INITIAL PROCESSING

A CPA request will be initially processed by the patent examining group
assigned the prior application.  The patent examining group will verify
that (1) the prior application is a nonprovisional application, (2) the
correct application number of the prior nonprovisional application is
identified in the request, (3) the request is properly signed, (4) the
prior nonprovisional application was pending on, and that the issue fee
has not been paid in the prior nonprovisional application on or prior
to, the filing date of the CPA request, (5) the prior nonprovisional
application was complete under  37 CFR 1.51(b) (e.g., the filing fee has
been paid and a signed oath or declaration under  37 CFR 1.63 has been
filed in the prior application), and (6) the proper filing fee has been
paid in the CPA.  If one or more conditions for filing a CPA have not
been satisfied or the proper filing fee has not been paid, the applicant
will be so notified and no examination will be made in the CPA until the
filing error has been corrected or the proper filing fee submitted.  See 
37 CFR 1.53(h).  If an examiner discovers that an improper or incomplete
CPA has been forwarded to the examiner in error, the application should
be immediately returned to a supervisory applications examiner (SAE)
within the patent examining group.  The improper or incomplete CPA is
not to be returned to OIPE.

INCORRECT PARENT APPLICATION NUMBER IDENTIFIED

A request for a CPA must identify the prior nonprovisional application
(37 CFR 1.53(d)(2)(i)) by application number (series code and serial
number) or by serial number and filing date.  Where a paper requesting a
CPA is filed which does not properly identify the prior nonprovisional
application number, the patent examining group should attempt to
identify the proper application number by reference to other identifying
information provided in the CPA papers, e.g., name of the inventor,
filing date, title of the invention, and attorney's docket number of the
prior application. If the patent examining group is able to identify the
correct application number of the prior application, the correct
application number should be entered in red ink on the paper requesting
the CPA and the entry should be dated and initialed.  If the patent
examining group is unable to identify the application number of the
prior application and the party submitting the CPA papers is a
registered practitioner, the practitioner may be requested by telephone
to supply a letter signed by the practitioner providing the correct
application number.  If all attempts to obtain the correct application
number are unsuccessful, the paper requesting the CPA should be returned
by the patent examining group to the sender where a return address is
available.  The returned CPA request must be accompanied by a cover
letter which will indicate to the sender that if the returned CPA
request is resubmitted to the Patent and Trademark Office with the
correct application number within two weeks of the mail date on the
cover letter, the original date of receipt of the CPA request will be
considered by the Patent and Trademark Office as the date of receipt of
the CPA request.  See  37 CFR 1.5(a).  A copy of the returned CPA
request and a copy of the date-stamped cover letter should be retained
by the patent examining group.  Applicants may use either the
Certificate of Mailing or Transmission procedure under  37 CFR 1.8 or
the "Express Mail" procedure under  37 CFR 1.10 for resubmissions of
returned CPA requests if they desire to have the benefit of the date of
deposit in the United States Postal Service.  If the returned CPA
request is not resubmitted within the two-week period with the correct
application number, the patent examining group should cancel the
original "Office Date" stamp on the CPA request and re-stamp the
returned CPA request with the date of receipt of the resubmission or
with the date of deposit as "Express Mail" with the United States Postal
Service, if the CPA request is resubmitted under  37 CFR 1.10.  Where
the CPA request is resubmitted later than two weeks after the return
mailing by the Patent and Trademark Office, the later date of receipt or
date of deposit as "Express Mail" of the resubmission will be considered
to be the filing date of the CPA request.  The two-week period to
resubmit the returned CPA request is not extendible.  See  37 CFR
1.5(a).

In addition to identifying the application number of the prior
application, applicant is urged to furnish in the request for a CPA the
following information relating to the prior application to the best of
his or her ability: (1) title of invention; (2) name of applicant(s);
and (3) correspondence address.  See  37 CFR 1.53(d)(8).

SIGNATURE REQUIREMENT

A CPA is a request to expressly abandon the prior application (37 CFR
1.53(d)(2)(v)) and, therefore, must be properly signed.  For a listing
of the individuals who may properly sign a CPA request, see  37 CFR
1.33(b).  In a joint application with no attorney or agent, all
applicants must sign the CPA request in order for the CPA request to be
considered properly signed.  An unsigned or improperly signed CPA
request will be placed in the file of the prior application, and is
entitled to an application filing date, but is ineffective to abandon
the prior application.  A CPA will NOT be examined until the CPA request
is properly signed.

A request for a CPA may be signed by a registered practitioner acting in
a representative capacity under  37 CFR 1.34(a).  However,
correspondence concerning the CPA will be sent by the Office to the
correspondence address as it appears in the prior nonprovisional
application until a new power of attorney, or change of correspondence
address signed by an attorney or agent of record in the prior
application, is filed in the CPA.

A request for a CPA may also be signed by the assignee or assignees of
the entire interest.  However, the request must be accompanied by papers
establishing the assignee's ownership under  37 CFR 3.73(b), unless such
papers were filed in the prior application and ownership has not
changed.

FILING DATE

The filing date of a CPA is the date on which a request on a separate
paper for a CPA is filed.  A request for a CPA cannot be submitted as a
part of papers filed for another purpose, see  37 CFR 1.53(d)(2), (e.g.,
the filing of a request for a CPA within an amendment after final for
the prior application is an improper request for a CPA).

A paper requesting a CPA may be sent to the Patent and Trademark Office
by mail (see MPEP Section  501), by facsimile transmission (see MPEP
Section  502.01) or it may be filed directly at the Attorney's Window
located in Room 1B03 of Crystal Plaza 2, 2011 South Clark Place,
Arlington, VA.  In addition, a CPA request may be delivered in person to
the patent examining group where the prior application is assigned.  All
CPA requests should be clearly marked "Box CPA."

The date of receipt accorded to a CPA request sent by facsimile
transmission is the date the complete transmission is received by an
Office facsimile unit, unless the transmission is completed on a
Saturday, Sunday, or Federal holiday within the District of Columbia. 
Correspondence for which transmission was completed on a Saturday,
Sunday, or Federal holiday within the District of Columbia, will be
accorded a receipt date of the next succeeding day which is not a
Saturday, Sunday, or Federal holiday within the District of Columbia.  A
CPA transmitted to the Patent and Trademark Office should be transmitted
to the patent examining group or art unit to which the prior application
is assigned.

An applicant filing a CPA by facsimile must include an authorization to
charge the basic filing fee to a deposit account, or the application
will be treated under  37 CFR 1.53(f) as having been filed without the
basic filing fee (as fees cannot otherwise be transmitted by facsimile).

37 CFR 1.6(f) provides for the situation in which the Office has no
evidence of receipt of a CPA transmitted to the Office by facsimile
transmission. 37 CFR 1.6(f) requires that a showing thereunder include,
inter alia, a copy of the sending unit's report confirming transmission
of the application or evidence that came into being after the complete
transmission of the application and within one business day of the
complete transmission of the application.

The Certificate of Mailing Procedure under  37 CFR 1.8 does not apply to
filing a request for a CPA, since the filing of such a request is
considered to be a filing of national application papers for the purpose
of obtaining an application filing date (37 CFR 1.8(a)(i)).  Thus, if
(1) the Patent and Trademark Office mails a final Office action on July
2, 1997 (Wednesday), with a shortened statutory period of 3 months to
respond and (2) a petition for a three-month extension of time (and the
fee) and a CPA are received in the Patent and Trademark Office on
January 5, 1998 (Monday), accompanied by a certificate of mailing under 
37 CFR 1.8 dated January 2, 1998 (Friday), then the prior application
was abandoned on January 3, 1998, and the CPA is improper because the
CPA was not filed before the abandonment of the prior application.  As a
further example, if (1) the Patent and Trademark Office mails a final
Office action on July 2, 1997 (Wednesday), with a shortened statutory
period of 3 months to respond and (2) applicant submits a petition for a
three-month extension of time (and the fee) and a CPA request via
facsimile transmission accompanied by a certificate of transmission
under  37 CFR 1.8 at 9:00 PM (PST) on January 2, 1998 (Friday), but the
Patent and Trademark Office does not receive the complete transmission
until 12:01 AM (EST) on January 3, 1998 (Saturday), then the CPA is
improper because the CPA request was not filed until January 5, 1998,
see  37 CFR 1.6(a)(3), which is after the abandonment (midnight on
Friday, January 2, 1998) of the prior application.

FILING FEE

The filing fee for a CPA is: (1) the basic filing fee as set forth in 
37 CFR 1.16; and (2) any additional fee required by  37 CFR 1.16 based
on the number of claims remaining in the application after entry of any
amendment accompanying the CPA and entry of any amendments under  37 CFR
1.116 not entered in the prior nonprovisional application which
applicant has requested to be entered in the CPA.  See  37 CFR
1.53(d)(3).

A general authorization to charge fees to a deposit account which was
filed in the prior application carries over from the prior
nonprovisional application to a CPA.  Thus, where a general
authorization to charge fees to a deposit account was filed in the prior
application the patent examining group should charge the necessary
filing fee of the CPA to the deposit account.  Because small entity
status does not automatically carry over from the prior application to
the CPA, unless the request for a CPA specifically indicates that the
filing fee is to be charged in the small entity amount, the large entity
filing fee should be charged.

Where a general authorization to charge fees to a deposit account was
filed in the prior application and applicant desires to file a CPA
without paying the filing fee on the filing date of the application,
applicant may file the CPA with specific instructions revoking the
general authorization filed in the prior application.

Where a filing date has been assigned to a CPA, but the basic filing fee
is insufficient or has been omitted, applicant will be so notified by
the patent examining group and given a period of time in which to file
the missing fee and to pay the surcharge set forth in  37 CFR 1.16(e) in
order to prevent abandonment of the application.  The time period
usually set is 2 months from the date of notification.  This time period
is subject to the provisions of  37 CFR 1.136(a).  A CPA will not be
placed upon the files for examination until all of its required parts,
including the filing fee and surcharge, if necessary, are received.  See 
37 CFR 1.53(h).  Thus, it would be inappropriate to conduct an interview
or to issue an action on the merits in the CPA until the filing fee and
surcharge, if necessary, are received.

EXTENSIONS OF TIME

If an extension of time is necessary to establish continuity between the
prior application and the CPA, the petition for extension of time should
be filed as a separate paper directed to the prior nonprovisional
application.  However, a CPA is not improper simply because the request
for a CPA is combined in a single paper with a petition for extension of
time.  The "separate paper" requirement of  37 CFR 1.53(d)(2) is
intended to preclude an applicant from burying a request for a CPA in a
paper submitted primarily for another purpose, e.g  ., within an
amendment after final for the prior application.

While the filing of a CPA is not strictly a reply to an Office action
mailed in a prior application, a request for a CPA is a paper directed
to and placed in the file of the prior application, and seeks to take
action in (i.e  ., expressly abandon) the prior application.  Thus, it
will be considered a "reply" for purposes of  37 CFR 1.136(a)(3).  As a
result, an authorization in the prior application to charge all required
fees, fees under  37 CFR 1.17, or all required extension of time fees to
a deposit account will be treated as a constructive petition for an
extension of time in the prior application for the purpose of
establishing continuity with the CPA.  The correct extension fee to be
charged in the prior application would be the extension fee necessary to
establish continuity between the prior application and the CPA on the
filing date of the CPA.

If an extension of time directed to the prior application is filed as a
separate paper, it must be accompanied by its own certificate of mailing
under  37 CFR 1.8 (if mailed by first class mail) or under  37 CFR 1.10
(if mailed by Express Mail), if the benefits of those rules are desired.

NOTICE OF CPA FILING

Since a "Notice of Abandonment" is not mailed in the prior application
as a result of the filing of a CPA nor is a filing receipt normally sent
for a CPA, the examiner should advise the applicant that a request for a
CPA has been granted by including Form Paragraph 2.30 in the first
Office action of the CPA.

2.30 CPA Status Acceptable

The request filed on [1] for a Continued Prosecution Application (CPA)
under  37 CFR 1.53(d) based on parent Application No. [2] is acceptable
and a CPA has been established.  An action on the CPA follows.

Examiner Note:

1. Use this paragraph in the first Office action of a CPA to advise the
applicant that a request for a CPA is acceptable and that a CPA has been
established. This notice should be given, since applicant is not
notified of the abandonment of the parent nor is a filing receipt
normally sent for a CPA.

2. In bracket 1 insert the filing date of the request for a CPA.

3. In bracket 2 insert the Application Number of the parent application.

A "conditional" request for a CPA will not be permitted.  Any
"conditional" request for a CPA submitted as a separate paper with an
amendment after final in an application will be treated as an
unconditional request for a CPA of the application.  This will result
(by operation of  37 CFR 1.53(d)(2)(v)) in the abandonment of the prior
application, and (if so instructed in the request for a CPA) the
amendment after final in the prior application will be treated as a
preliminary amendment in the CPA.  The examiner should advise the
applicant that a "conditional" request for a CPA has been treated as an
unconditional request for a CPA and has been accepted by including Form
Paragraph 2.35 in the first Office action of the CPA.

2.35 CPA Status Acceptable - Conditional Request

Receipt is acknowledged of the "conditional" request for a Continued
Prosecution Application (CPA) filed on [1] under  37 CFR 1.53(d) based
on prior Application No. [2].  Any "conditional" request for a CPA
submitted as a separate paper is treated as an unconditional request for
a CPA.  Accordingly, the request for a CPA application is acceptable and
a CPA has been established.  An action on the CPA follows.

Examiner Note:

1. Use this paragraph in the first Office action of a CPA to advise the
applicant that a "conditional" request for a CPA is treated as an
unconditional request and the CPA is acceptable and that a CPA has been
established. This notice should be given, since applicant is not
notified of the abandonment of the parent nor is a filing receipt
normally sent for a CPA.

2. In bracket 1 insert the filing date of the request for a CPA.

3. In bracket 2 insert the Application Number of the parent application.

Where the examiner recognizes that a paper filed in the prior
application contains a request for a CPA, but the request is not in a
separate paper, the examiner should, if possible, contact applicant by
telephone to notify applicant that the request for a CPA is ineffective
or notify the applicant in the next Office action that the CPA request
is ineffective by using Form Paragraph 2.31.

2.31 CPA Status Not Acceptable - Request Not on Separate Paper

Receipt is acknowledged of the request for a Continued Prosecution
Application (CPA) filed on [1] under  37 CFR 1.53(d) based on
Application No. [2]. However, because the request was not submitted on a
separate paper as required by  37 CFR 1.53(d)(2), the request is not
acceptable and no CPA has been established.

Examiner Note:

1. Use this paragraph to inform applicant that a request for a CPA is
not in compliance with  37 CFR 1.53(d)(2) and, therefore, no CPA has
been established.

2. In bracket 1 insert the filing date of the paper containing the
request for a CPA.

3. In bracket 2 insert the Application Number of the prior application
identified in the CPA request.

INVENTORSHIP

The inventive entity set forth in the prior nonprovisional application
automatically carries over into the CPA UNLESS the request for a CPA is
accompanied by or includes on filing a statement requesting the deletion
of the name or names of the person or persons who are not inventors of
the invention being claimed in the CPA. 37 CFR 1.53(d)(4).  The
statement requesting the deletion of the names of the person or persons
who are not inventors in the continuation or divisional application must
be signed by person(s) authorized pursuant to  37 CFR 1.33(b) to sign an
amendment in the continuation or divisional application.  The examiner
should acknowledge receipt of a statement filed with a CPA requesting
the deletion of the name or names of the person or persons who are not
inventors of the invention being claimed in the CPA in the first Office
action in the CPA by using Form Paragraph 2.32.

2.32 Request To Delete a Named Inventor

Receipt is acknowledged of the statement requesting that [1] be deleted
as a named inventor which was filed with the Continued Prosecution
Application (CPA) on [2].  The inventorship has been corrected as
requested.

Examiner Note:

1. Use this paragraph where a Continued Prosecution Application (CPA) is
filed accompanied by a statement requesting deletion of the name or
names of the person or persons who are not inventors of the invention
being claimed in the new application. Any request to delete a named
inventor in a CPA filed after the CPA is filed must be accompanied by a
petition under  37 CFR 1.48.

2. In bracket 1 insert the name or names of the inventor(s) requested to
be deleted.

3. In bracket 2 insert the filing date of the CPA.

After the first Office action is mailed, the application file should be
sent to OIPE for revision of its records to reflect the change of
inventorship.  The examiner should note the change of inventorship on
the original oath or declaration by writing in red ink in the left
column "See Paper No. __ for inventorship changes."  See MPEP Section 
201.03 and Section  605.04(g).  Any request by applicant for a corrected
filing receipt to show the change in inventorship should not be
submitted until after the examiner has acknowledged the change in
inventorship in an Office action.  Otherwise, the "corrected" filing
receipt may not show the change in inventorship.

The inventive entity of the CPA will be the same as the inventive entity
of the prior application even if the CPA papers include a transmittal
letter or a new oath or declaration naming an inventor not named in the
prior application.  However, the new oath or declaration will be placed
in the application file.  Upon review of the application, the examiner
will notify the applicant in the first Office action using Form
Paragraph 2.33 that the inventive entity of the prior application has
been carried over into the CPA.  If the inventive entity set forth in
the transmittal letter of the new oath or declaration is desired, then a
petition under  37 CFR 1.48 along with the required fee set forth in  37
CFR 1.17(i) must be filed.  No new oath or declaration need be filed
with the later-filed petition under  37 CFR 1.48 if such was submitted
on filing of the CPA.  If a petition under  37 CFR 1.48 is not filed, it
should be noted that the filing in a CPA of a transmittal letter or a
new oath or declaration containing an inventor not named in the prior
nonprovisional application may result in the claims in the CPA being
rejected under  35 U.S.C. 102(f).

2.33 New Inventor Identified

It is noted that [1] identified as a named inventor in the Continued
Prosecution Application (CPA) filed under  37 CFR 1.53(d) on [2], but no
petition under  37 CFR 1.48, as is required, was filed to correct the
inventorship. Any request to add an inventor must be in the form of a
petition under  37 CFR 1.48. Otherwise, the inventorship in the CPA
shall be the same as in the prior application.

Examiner Note:

1. Use this paragraph where a request for a Continued Prosecution
Application (CPA) identifies one or more inventors who were not named as
inventors in the prior application on the filing date of the CPA.

2. In bracket 1 insert the name or names of the inventor(s) requested to
be added followed by either --was-- or --were--, as appropriate.

3. In bracket 2 insert the filing date of the CPA.

No inventor may be added to a CPA except by way of a petition under  37
CFR 1.48.  Also, after the filing date of the CPA, no inventor may be
deleted in a CPA, except by way of a petition under  37 CFR 1.48.  A
petition for correction of inventorship under  37 CFR 1.48 filed in the
prior nonprovisional application, but not considered in the prior
nonprovisional application at the time the CPA is filed,   will be
considered in the CPA.

BENEFIT OF EARLIER FILING DATE

A request for a CPA is a specific reference under  35 U.S.C. 120 to
every application assigned the application number identified in the
request, and  37 CFR 1.78(a)(2) provides that a request for a CPA is the
specific reference under  35 U.S.C. 120 to the prior application.  That
is, the CPA includes the request for an application under  37 CFR
1.53(d) and the recitation of the application number of the prior
application in such request is the "specific reference to the earlier
filed application" required by  35 U.S.C. 120.  No further amendment to
the specification of the CPA is required by  35 U.S.C. 120 or  37 CFR
1.78(a) to identify or reference the prior application, as well as any
other application assigned the application number of the prior
application (e.g., in instances in which a CPA is the last in a chain of
CPAs).

Where an application claims a benefit under  35 U.S.C. 120 of a chain of
applications, the application must make a reference to the first
(earliest) application and every intermediate application.  See Sampson
v. Ampex Corp., 463 F.2d 1042, 1044-45, 174 USPQ 417, 418-19 (2d Cir.
1972); Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 93,
160 USPQ 177, 179 (7th Cir. 1968); Hovlid v. Asari, 305 F.2d 747, 751,
134 USPQ 162, 165 (9th Cir. 1962). See also MPEP Section  201.11.  In
addition, every intermediate application must also make a reference to
the first (earliest) application and every application after the first
application and before such intermediate application.

In the situation in which there is a chain of CPAs, each CPA in the
chain will, by operation of  37 CFR 1.53(d)(7), contain the required
specific reference to its immediate prior application, as well as every
other application assigned the application number identified in such
request.  Put simply, a specific reference to a CPA by application
number and filing date will constitute a specific reference to: (1) the
non-continued prosecution application originally assigned such
application number (the prior application as to the first CPA in the
chain); and (2) every CPA assigned the application number of such
non-continued prosecution application.

Where the non-continued prosecution application originally assigned such
application number itself claims the benefit of a prior application or
applications under  35 U.S.C. 120, 121, or 365(c),  37 CFR 1.78(a)(2)
continues to require that such application contain in its first sentence
a reference to any such prior application(s).  As a CPA uses the
specification of the prior application, such a specific reference in the
prior application (as to the CPA) will constitute such a specific
reference in the CPA, as well as every CPA in the event that there is a
chain of CPAs.

Where an applicant in an application filed under  37 CFR 1.53(b) seeks
to claim the benefit of a CPA under  35 U.S.C. 120 or 121 (as a
continuation, divisional, or continuation-in-part),  37 CFR 1.78(a)(2)
requires a reference to the CPA by application number in the first
sentence of such application. 37 CFR 1.78(a)(2) provides that "[t]he
identification of an application by application number under this
section is the specific reference required by  35 U.S.C. 120 to every
application assigned that application number."  Thus, where a referenced
CPA is in a chain of CPAs, this reference will constitute a reference
under  35 U.S.C. 120 and  37 CFR 1.78(a)(2) to every CPA in the chain as
well as the non-continued prosecution application originally assigned
such application number. 

Therefore, regardless of whether an application is filed under  37 CFR
1.53(b) or (d), a claim under  35 U.S.C. 120 to the benefit of a CPA is,
by operation of  37 CFR 1.53(d)(7) and  37 CFR 1.78(a)(2), a claim to
every application assigned the application number of such CPA.  In
addition, applicants will not be permitted to choose to delete such a
claim as to certain applications assigned that application number (e.g.,
for patent term purposes).  See  37 CFR 1.53(d)(7).

Further, an applicant in a CPA is not permitted to amend the first
sentence of the specification to provide a specific reference to the
prior application.  Any such amendment will not be entered.  The
applicant should be advised in the next Office action that any such
amendment to the specification has not been entered by using Form
Paragraph 2.34. 

2.34 Reference in CPA to Prior Application

The amendment filed [1] requesting that the specification be amended to
refer to the present Continued Prosecution Application (CPA) as a [2]
application of Application No. [3] has not been entered.  As set forth
in  37 CFR 1.53(d)(7), a request for a CPA is the specific reference
required by  35 U.S.C. 120 to every application assigned the application
number identified in such request. Thus, there is no need to amend the
first sentence of the specification to refer back to the prior
application and any such amendment shall be denied entry.

Examiner Note:

1. Use this paragraph to inform the applicant that an amendment to the
first sentence of the specification referring to the CPA as a continuing
application of the prior application has not been entered and will not
be entered if submitted again.

2. In bracket 1, insert the filing date of the amendment.

3. In bracket 2, insert either --continuation-- or --divisional--.

4. In bracket 3, insert the Application Number of the prior
nonprovisional application.

Claims under  35 U.S.C. 119(a)-(e) for the benefit of the filing dates
of earlier applications in a parent application will automatically carry
over to a CPA.

WAIVER OF CONFIDENTIALITY

A CPA is construed to include a waiver of confidentiality by the
applicant under  35 U.S.C. 122 to the extent that any member of the
public who is entitled under the provisions of  37 CFR 1.14 to obtain
access to, copies of, or information concerning either the prior
application or any continuing application filed under the provisions of 
37 CFR 1.53(d) may be given similar access to, copies of, or similar
information concerning, the other application(s) in the application
file. 37 CFR 1.53(d)(6).  However, all applications in the file jacket
of a pending CPA are treated as pending, rather than abandoned, in
determining whether copies of, and access to, such applications will be
granted. 37 CFR 1.14(a)(3)(iv).  See MPEP Section  103 for further
discussion of access to an abandoned application contained in the file
of a pending CPA.

CERTIFIED COPY

A certified copy of a CPA will be prepared by the Certification Branch
upon request.  The certified copy will consist of a copy of the most
recent non-continued prosecution application in the chain of CPAs.  The
filing date of the CPA will be shown in the certified copy as the filing
date of the most recent non-continued prosecution application in the
chain of CPAs.

SMALL ENTITY STATUS

Small entity status established in the parent application does not
automatically carry over to a CPA. Status as a small entity must be
specifically established in every application in which the status is
available and desired.  However,  37 CFR 1.28(a)(2) provides that in any
continuing application, including a CPA, status as a small entity may be
established simply by paying the basic filing fee in the small entity
amount.  If payment of the basic filing fee in the small entity amount
is made in a CPA, it would not be necessary to file a new statement or a
copy of the prior statement.  The payment of the small entity basic
filing fee will be treated as a reference to the statement in the prior
application.

TERMINAL DISCLAIMER

A terminal disclaimer filed in the parent application carries over to a
CPA.  The terminal disclaimer filed in the parent application carries
over because the CPA retains the     same application number   as the
parent application,   i.e  ., the application number to which the
previously filed terminal disclaimer is directed.  If applicant does not
want the terminal disclaimer to carry over to the CPA, applicant must
file a petition under  37 CFR 1.182 along with the required petition
fee, requesting the terminal disclaimer filed in the parent application
not be carried over to the CPA. See MPEP Section  1490, "Withdrawing a
Terminal Disclaimer," subheading entitled "A. Before Issuance of
Patent."

PRIOR ELECTION

An election made in the prior application carries over to the CPA only
if all of the following conditions are met:  (1) the CPA is designated
as a continuation or is not designated at all (i.e  ., the CPA is NOT
designated as a divisional); (2) there was an express election by the
applicant in reply to a restriction requirement in the prior
application; (3) the CPA presents claim(s) drawn only to invention(s)
claimed in the prior application; and (4) the CPA does not contain an
indication that a shift in election is desired.

Where all of the conditions are met, the examiner's first action should
repeat the restriction requirement made in the prior application to the
extent it is still applicable in the CPA and include a statement that
prosecution is being continued on the invention elected and prosecuted
by applicant in the prior application.

INFORMATION DISCLOSURE STATEMENTS

All information disclosure statements filed in the prior application
that comply with the content requirements of  37 CFR 1.98 will be
considered in a CPA by the examiner.  No specific request that the
previously submitted information be considered in a CPA is required.

In addition, all information disclosure statements that comply with the
content requirements of  37 CFR 1.98 and are filed within three months
of the filing date of a CPA will be considered by the examiner,
regardless of whatever else has occurred in the examination process up
to that point in time.  Thus, in the rare instance that a final Office
action or a notice of allowance is prepared and mailed prior to a date
which is 3 months from the filing date of the CPA, any information
contained in an information disclosure statement complying with  37 CFR
1.98, and filed within that 3-month window must be considered by the
examiner.  Since a CPA requires less processing time than a file wrapper
continuing application under former  37 CFR 1.62, it should be expected
that a first Office action will normally issue in a CPA well within
three months from the filing date of the CPA request.  The submission of
an information disclosure statement after the first Office action is
mailed could delay prosecution and result in the lost of patent term. 
Therefore, applicants are encouraged to file any information disclosure
statement in a CPA as early possible, preferably before the first Office
action.  For further discussion of information disclosure statements,
see MPEP Section  609.

COPIES OF AFFIDAVITS

Affidavits and declarations, such as those under  37 CFR 1.130, 1.131
and 1.132 filed during the prosecution of the parent nonprovisional
application, automatically become a part of the CPA.  Therefore, no copy
of the original affidavit or declaration filed in the parent
nonprovisional application need be filed in the CPA.

FORMS

Form PTO/SB/29, "Continued Prosecution Application (CPA) Request
Transmittal" may be used by applicant for filing a CPA under  37 CFR
1.53(d).  The forms used by the patent examining groups to notify
applicants of defects regarding applications filed under  37 CFR 1.53(d)
are shown below.  "Notice of Improper Application, No Filing Date
Granted" Form PTO-2011; "Notice of Improper CPA Filing Under  37 CFR
1.53(d), No Filing Date Granted" Form PTO-2012; "Notice To File Missing
Parts Of Application (CPA), Filing Date Granted" Form PTO-2016; "Notice
Of Incomplete Reply (CPA) (Filing Date Granted)" Form PTO-2018; and
"Notice Of Abandonment Under  37 CFR 1.53(f) (CPA) (Filing Date
Granted)" Form PTO-2019.

Form PTO/SB/29. Continued Prosecution Application (CPA) Request
Transmittal[GRAPHIC]

[GRAPHIC]

Form PTO-2011. Notice of Improper Application[GRAPHIC]

Form PTO-2012. Notice of Improper CPA Filing Under 37 CFR
1.53(d)[GRAPHIC]

Form PTO-2016. Notice to File Missing Parts of Application
(CPA)[GRAPHIC]

Form PTO-2018. Notice of Incomplete Reply (CPA)[GRAPHIC]

Form PTO-2019. Notice of Abandonment Under 37 CFR 1.53(f) (CPA)[GRAPHIC]

---SECTION---201.07 Continuation Application

A continuation is a second application for the same invention claimed in
a prior nonprovisional application and filed before the original becomes
abandoned or patented. The continuation application may be filed under 
37 CFR 1.53(b) or 1.53(d). The applicant in the continuation application
must include at least one inventor named in the prior nonprovisional
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 constitute new matter if inserted in
the original application.

An application claiming the benefits of a provisional application under 
35 U.S.C. 119(e) should not be called a "continuation'' of the
provisional application since the application will have its patent term
calculated from its filing date, whereas an application filed under  35
U.S.C. 120, 121, or 365(c) will have its patent term calculated from the
date on which the earliest application was filed, provided a specific
reference is made to the earlier filed application(s),  35 U.S.C.
154(a)(2) and (a)(3).

At any time before the patenting or abandonment of or termination of
proceedings on his or her earlier nonprovisional application, an
applicant may have recourse to filing a continuation in order to
introduce into the application a new set of claims and to establish a
right to further examination by the primary examiner. An application
under  37 CFR 1.53(d), however, must be filed prior to payment of the
issue fee.

For notation to be put on the file wrapper by the examiner in the case
of a continuation application, see MPEP Section  202.02, unless a
petition under  37 CFR 1.313(b)(5) is granted in the prior application.

Use Form Paragraph 2.05 to remind applicant of possible continuation
status.

2.05 Possible Status as Continuation

This application discloses and claims only subject matter disclosed in
prior application no   [1], filed   [2], and names an inventor or
inventors named in the prior application. Accordingly, this application
may constitute a continuation or division. Should applicant desire to
obtain the benefit of the filing date of the prior application,
attention is directed to  35 U.S.C. 120 and  37 CFR 1.78.

Examiner Note:

1. This paragraph should only be used if it appears that the application
may be a continuation, but priority has not been properly established.

2. An application claiming the benefits of a provisional application
under  35 U.S.C. 119(e) should not be called a "continuation'' of the
provisional application since the application will have its patent term
calculated from its filing date, whereas an application filed under  35
U.S.C. 120, 121, or 365(c) will have its patent term calculated from the
date on which the earliest application was filed, provided a specific
reference is made to the earlier filed application(s),  35 U.S.C.
154(a)(2) and (a)(3).

---SECTION---201.08 Continuation-in-Part Application

A continuation-in-part is an application filed during the lifetime of an
earlier nonprovisional application by the same applicant, repeating some
substantial portion or all of the earlier nonprovisional application and
adding matter not disclosed in the said earlier nonprovisional
application. (In re Klein, 1930 C.D. 2, 393 O.G. 519 (Comm'r Pat.
1930)). The continuation-in-part application may only be filed under  37
CFR 1.53(b).

A continuation-in-part application CANNOT be filed as a continued
prosecution application (CPA) under  37 CFR 1.53(d).

An application claiming the benefits of a provisional application under 
35 U.S.C. 119(e) should not be called a "continuation-in-part'' of the
provisional application since the application will have its patent term
calculated from its filing date, whereas an application filed under  35
U.S.C. 120, 121, or 365(c) will have its patent term calculated from the
date on which the earliest application was filed, provided a specific
reference is made to the earlier filed application(s),  35 U.S.C.
154(a)(2) and (a)(3).

The mere filing of a continuation-in-part does not itself create a
presumption that the applicant acquiesces in any rejections which may be
outstanding in the copending national nonprovisional application or
applications upon which the continuation-in-part application relies for
benefit.

A continuation-in-part filed by a sole applicant may also derive from an
earlier joint application showing a portion only of the subject matter
of the later application, subject to the conditions set forth in  35
U.S.C. 120 and  37 CFR 1.78. Subject to the same conditions, a joint
continuation-in-part application may derive from an earlier sole
application.

Unless the filing date of the earlier nonprovisional application is
actually needed, for example, in the case of an interference or to
overcome a reference, there is no need for the Office to make a
determination as to whether the requirement of  35 U.S.C. 120, that the
earlier nonprovisional application discloses the invention of the second
application in the manner provided by the first paragraph of  35 U.S.C.
112, is met and whether a substantial portion of all of the earlier
nonprovisional application is repeated in the second application in a
continuation-in-part situation. Accordingly, an alleged
continuation-in-part application should be permitted to claim the
benefit of the filing date of an earlier nonprovisional application if
the alleged continuation-in-part application complies with the following
formal requirements of  35 U.S.C. 120:

(A) The first application and the alleged continuation-in-part
application were filed with at least one common inventor;

(B) The alleged continuation-in-part application was "filed before the
patenting or abandonment of or termination of proceedings on the first
application or an application similarly entitled to the benefit of the
filing date of the first application"; and

(C) The alleged continuation-in-part application "contains or is amended
to contain a specific reference to the earlier filed application."

For notation to be put on the file wrapper by the examiner in the case
of a continuation-in-part application see MPEP Section  202.02.  See
MPEP Section  708 for order of examination.

Use Form Paragraph 2.06 to remind applicant of possible
continuation-in-part status.

2.06 Possible Status as Continuation-in-Part

This application repeats a substantial portion of prior Application No.
[1], filed [2], and adds and claims additional disclosure not presented
in the prior application.  Since this application names an inventor or
inventors named in the prior application, it may constitute a
continuation-in-part of the prior application.  Should applicant desire
to obtain the benefit of the filing date of the prior application,
attention is directed to  35 U.S.C. 120 and  37 CFR 1.78.

Examiner Note:

1. This paragraph should only be used when it appears that the
application may qualify as a continuation-in-part, but no priority claim
has been perfected.

2. An application claiming the benefits of a provisional application
under  35 U.S.C. 119(e) should not be called a "continuation" of the
provisional application since the application will have its patent term
calculated from its filing date, whereas an application filed under  35
U.S.C. 120, 121, or 365(c) will have its term calculated from the date
on which the earliest application was filed, provided a specific
reference is made to the earlier filed application(s),  35 U.S.C.
154(a)(2) and (a)(3).

---SECTION---201.09 Substitute Application

The use of the term "Substitute" to designate any application which is
in essence the duplicate of an application by the same applicant
abandoned before the filing of the later application, finds official
recognition in the decision Ex parte Komenak, 1940 C.D. 1, 512 O.G. 739
(Comm'r Pat. 1940). Current practice does not require applicant to
insert in the specification reference to the earlier application;
however, attention should be called to the earlier application. The
notation on the file wrapper (see MPEP Section  202.02) that one
application is a "Substitute" for another is printed in the heading of
the patent copies. See MPEP Section  202.02.

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

Use Form Paragraph 2.07 to remind applicant of possible substitute
status.

2.07 Definition of a Substitute

Applicant refers to this application as a "substitute" of Application
No. [1], filed   [2].  The use of the term "substitute" to designate an
application which is in essence the duplicate of an application by the
same applicant 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 (Comm'r Pat. 1940).  The notation on the file wrapper (See MPEP
Section  202.02) that one case is a "substitute" for another is printed
in the heading of the patent copies.  A "substitute" does not obtain the
benefit of the filing date of the prior application. 

---SECTION---201.10 Refile

No official definition has been given the term "Refile," though it is
sometimes used as an alternative for the term "Substitute."

If the applicant designates his or her application as "Refile" and the
examiner finds that the application is in fact a duplicate of a former
application by the same party which was abandoned prior to the filing of
the second application, the examiner should require the substitution of
the word "substitute" for "refile", since the former term has official
recognition.

Use Form Paragraph 2.08 to remind applicant of possible refile status.

2.08 Definition of a Refile

It is noted that applicant refers to this application as a "refile."  No
official definition has been given the term "refile," though it is
sometimes used as an alternative for the term "substitute."  Since this
application appears to be in fact a duplicate of a former application
which was abandoned prior to the filing of the second case, the
substitution of the word "substitute" for "refile" is required since the
term "substitute" has official recognition.  Applicant is required to
make appropriate corrections.

---SECTION---201.11 Continuity Between Applications: When Entitled to
Filing Date

Under certain circumstances an application for patent is entitled to the
benefit of the filing date of a prior nonprovisional application or
provisional application which has at least one common inventor. The
conditions are specified in  35 U.S.C. 120 and  35 U.S.C. 119(e).

35 U.S.C. 120 Benefit of earlier filing date in the United States.

An application for patent for an invention disclosed in the manner
provided by the first paragraph of section 112 of this title in an
application previously filed in the United States, or as provided by
section 363 of this title, which is filed by an inventor or inventors
named in the previously filed application shall have the same effect, as
to such invention, as though filed on the date of the prior application,
if filed before the patenting or abandonment of or termination of
proceedings on the first application or on an application similarly
entitled to the benefit of the filing date of the first application and
if it contains or is amended to contain a specific reference to the
earlier filed application.

35 U.S.C. 119 Benefit of earlier filing date; right of priority.

                  +++    

(e)(1) An application for patent filed under section 111(a) or section
363 of this title for an invention disclosed in the manner provided by
the first paragraph of section 112 of this title in a provisional
application filed under section 111(b) of this title, by an inventor or
inventors named in the provisional application, shall have the same
effect, as to such invention, as though filed on the date of the
provisional application filed under section 111(b) of this title, if the
application for patent filed under section 111(a) or section 363 of this
title is filed not later than 12 months after the date on which the
provisional application was filed and if it contains or is amended to
contain a specific reference to the provisional application.

(2) A provisional application filed under section 111(b) of this title
may not be relied upon in any proceeding in the Patent and Trademark
Office unless the fee set forth in subparagraph (A) or (C) of section
41(a)(1) of this title has been paid and the provisional application was
pending on the filing date of the application for patent under section
111(a) or section 363 of this title.

There are four conditions for receiving the benefit of an earlier filing
date under  35 U.S.C. 120 or under  35 U.S.C. 119(e).

(A) The second application must be an application for a patent for an
invention which is also disclosed in the first application (the parent
or original nonprovisional application or provisional application); the
disclosure of the invention in the first application and in the second
application must be sufficient to comply with the requirements of the
first paragraph of  35 U.S.C. 112. See Transco Prods., Inc. v.
Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir.
1994).

Form Paragraphs 2.09 and 2.10 should be used where the disclosure of the
second application is not for an invention disclosed in the first
application.

2.09 Heading for Conditions for Domestic Priority Under 35 U.S.C. 119(e)
or 120

Applicant has not complied with one or more conditions for receiving the
benefit of an earlier filing date under 35 U.S.C. [1] as follows:

Examiner Note:

1. In bracket 1, insert either or both --119(e)-- or --120--.

2. One or more of the following form paragraphs 2.10 to 2.12 must follow
depending upon the circumstances.

2.10 Disclosure Must Be the Same

The second application must be an application for a patent for an
invention which is also disclosed in the first application (the parent
or provisional application); the disclosure of the invention in the
parent application and in the second application must be sufficient to
comply with the requirements of the first paragraph of  35 U.S.C. 112.
See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d
551, 32 USPQ2d 1077 (Fed. Cir. 1994).

Examiner Note:

1. This paragraph must be preceded by heading paragraph 2.09.

2. Form paragraph 2.29 should be used where the claim(s) of the
nonprovisional application lack(s) support in the disclosure of the
provisional application.

2.29 Domestic Priority Not Granted

Applicant's claim for domestic priority under  35 U.S.C. 119(e) is
acknowledged.  However, the provisional application upon which priority
is claimed fails to provide adequate support under  35 U.S.C. 112 for
claim  [1] of this application. [2]

Examiner Note:

1. This form paragraph may be used when there is lack of support in the
provisional application for the pending claims in the nonprovisional
application. 

2. In bracket 2, provide an explanation of lack of support.

(B) The second application must be copending with the first application
or with an application similarly entitled to the benefit of the filing
date of the first application. With respect to provisional applications,
the second application must be filed not later than 12 months after the
date on which the provisional application was filed in order to
establish copendency. If the last day of pendency is on a Saturday,
Sunday, or Federal holiday, the nonprovisional application must be filed
on the Saturday, Sunday, or Federal holiday (See MPEP Section  505) or
prior thereto,  37 CFR 1.78(a)(3).

(C) The second application must contain a specific reference to the
prior application(s) in the specification.

A request for a continued prosecution application (CPA) filed under  37
CFR 1.53(d) is itself the specific reference required by  35 U.S.C. 120
and  37 CFR 1.78(a)(2) to every application assigned the same
application number identified in the request. (Note:  The CPA is
assigned the same application number as the prior application.)  In a
CPA, a specific reference in the first sentence of the specification
following the title to a prior application assigned the same application
number is not required and should not be made.  No amendment in a CPA
may delete the specific reference to the prior application assigned the
same application number. A specific reference to an application not
assigned the same application number, but relied on for benefit under 
35 U.S.C. 120 and  37 CFR 1.78(a)(2) is required.  Cross references to
other related applications not assigned the same application as the CPA
may be made when appropriate.

Form Paragraphs 2.09 and 2.12 are required to be used to indicate
reference to the prior application.

2.12 Application Must Contain a Reference to Parent

An application in which the benefits of an earlier application are
desired must contain a specific reference to the prior application(s) in
the first sentence of the specification (37 CFR 1.78).

Examiner Note:

1. This paragraph must be preceded by heading paragraph 2.09.

2. This paragraph should not be used for a continued prosecution
application (CPA).  In a continued prosecution application (CPA) filed
under  37 CFR 1.53(d), a specific reference in the first sentence of the
specification to the prior application is not required and should not be
made.  The specific reference requirement of  35 U.S.C. 120 is met by
the transmittal request for the CPA which is considered to be part of
the CPA application (37 CFR 1.53(d)(2)(iv) and (d)(7)).

(D) The second application must be filed by an inventor or inventors
named in the previously filed application.

COPENDENCY

Copendency is defined in the clause which requires that the second
application must be filed before (1) the patenting, or (2) the
abandonment of, or (3) the termination of proceedings in the first
application. Since provisional applications become abandoned, by
operation of law, 12 months after filing, any nonprovisional application
that claims the benefit of the provisional application filing date must
be filed not later than 12 months after the filing date of the
provisional application.

Use Form Paragraphs 2.09 and 2.11 to indicate copendency is required.

2.11 Application Must Be Copending With Parent

An application in which the benefits of an earlier application are
desired must be copending with the prior application or with an
application similarly entitled to the benefit of the filing date of the
prior application.

Examiner Note:

This paragraph must be preceded by heading paragraph 2.09.

If the first application issues as a patent, it is sufficient for the
second application to be copending with it if the second application is
filed on the same date, or before the date that the patent issues on the
first application.  Thus, the second application may be filed while the
first is still pending before the examiner, while it is in issue, or
even (for applications filed under  37 CFR 1.53(b) or former  37 CFR
1.60) between the time the issue 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," refers to abandonment for failure to
prosecute (MPEP Section  711.02), express abandonment (MPEP Section 
711.01), and abandonment for failure to pay the issue fee (37 CFR
1.316). Provisional applications become abandoned, by operation of law,
12 months after filing (35 U.S.C. 111(b)(5)). A provisional application
may become abandoned at an earlier date for failure to comply with
filing requirements such as failure to submit the required fee in a
timely manner (35 U.S.C. 111(b)(3)(c)). If an abandoned application is
revived or a petition for late payment of the issue fee is granted by
the Commissioner, it becomes reinstated as a pending application and the
preceding period of abandonment has no effect. See MPEP Section 
711.03(c). A provisional application that has been abandoned may be
revived so as to be pending for a period of no longer than 12 months
from its filing date (37 CFR 1.137(e)).

The expression "termination of proceedings" includes the situations when
an application is abandoned or when a patent has been issued, and hence
this expression is the broadest of the three.

After a decision by the Court of Appeals for the Federal Circuit in
which the rejection of all claims is affirmed, proceedings are
terminated on the date of receipt of the Court's certified copy of the
decision by the Patent and Trademark Office. Continental Can Company,
Inc. v. Schuyler, 168 USPQ 625 (D.D.C. 1970). There are several other
situations in which proceedings are terminated as is explained in MPEP
Section  711.02(c).

When proceedings in an application are terminated, 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. The second application may be referred to as a continuing
application when the first application is not a provisional application.
Continuing applications include those applications 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 expressions developed for convenience. The statute is so
worded that the first application may contain more than the second, or
the second application may contain more than the first, and in either
case the second application is entitled to the benefit of the filing
date of the first as to the common subject matter.

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 application.
This should appear as the first sentence of the specification following
the title preferably as a separate paragraph (37 CFR 1.78(a)). A request
for a continued prosecution application (CPA) filed under  37 CFR
1.53(d) is itself the specific reference required by  35 U.S.C. 120 and 
37 CFR 1.78(a)(2) to every application assigned the same application
number identified in the request.  (Note:  The CPA is assigned the same
application number as the prior application.)  In a CPA, a specific
reference in the first sentence of the specification following the title
to a prior application assigned the same application number is not
required and should not be made.  No amendment in a CPA may delete the
specific reference to the prior application assigned the same
application number.  A specific reference to an application not assigned
the same application number, but relied on for benefit under  35 U.S.C.
120 and  37 CFR 1.78(a)(2) is required.  Cross references to other
related applications not assigned the same application as the CPA may be
made when appropriate.When the nonprovisional application is entitled
under  35 U.S.C. 120 to an earlier U.S. effective filing date, a
statement such as "This is a division (continuation,
continuation-in-part) of Application No. ---, filed ---'' should appear
as the first sentence of the description, except in the case of design
applications where it should appear as set forth in MPEP Section 
1504.20.  Where a nonprovisional application is claiming the benefit
under  35 U.S.C. 120 of a prior national stage application filed under 
35 U.S.C. 371, a suitable reference would read "This application is a
continuation of U.S. Application No. 08/---, filed ---, which was the
National Stage of International Application No. PCT/DE95/---, filed
---." When the nonprovisional application is entitled to an earlier U.S.
effective filing date of one or more provisional applications under  35
U.S.C. 119(e), a statement such as "This application claims the benefit
of U.S. Provisional Application No. 60/---, filed ---, and U.S.
Provisional Application No. 60/ ---, filed ---.'' should appear as the
first sentence of the description. In addition, for an application which
is claiming the benefit under  35 U.S.C. 120 of a prior application,
which in turn claims the benefit of a provisional application under  35
U.S.C. 119(e), a suitable reference would read, "This application is a
continuation of U.S. Application No. 08/---, filed ---, now abandoned,
which claims the benefit of U.S. Provisional Application No. 60/---,
filed ---.'' Status of nonprovisional parent applications (whether it is
patented or abandoned) should also be included. If a parent application
has become a patent, the expression, "Patent No. _ _ " should follow the
filing date of the parent application. If a parent application has
become abandoned, the expression "abandoned" should follow the filing
date of the parent application. In the case of design applications, it
should appear as set forth in MPEP Section  1504.20. In view of this
requirement, the right to rely on a prior application may be waived or
refused by an applicant by refraining from inserting a reference to the
prior application in the specification of the later one.  If the
examiner is aware of the fact that an application is a continuing
application of a prior one, he or she should merely call attention to
this in an Office action by using the wording of Form Paragraphs 2.15 or
2.16.

2.15 Reference to Parent Application, 35 U.S.C. 119(e) or 120 Benefit

If applicant desires priority under 35 U.S.C. [1] based upon a
previously filed copending application, specific reference to the
earlier filed application must be made in the instant application.  This
should appear as the first sentence of the specification following the
title, preferably as a separate paragraph.  The status of nonprovisional
parent application(s) (whether patented or abandoned) should also be
included.  If a parent application has become a patent, the expression
"now Patent No. _______" should follow the filing date of the parent
application.  If a parent application has become abandoned, the
expression "now abandoned" should follow the filing date of the parent
application.

Examiner Note:

1. In bracket 1, insert --119(e)-- or --120--.

2. In a continued prosecution application (CPA) filed under  37 CFR
1.53(d), a specific reference in the first sentence of the specification
to the prior application is not required and should not be made. The
specific reference requirement of  35 U.S.C. 120 is met by the
transmittal request for the CPA which is considered to be part of the
CPA application.  37 CFR 1.53(d)(2)(iv) and (d)(7).

2.16 Reference to Copending Application

It is noted that this application appears to claim subject matter
disclosed in prior copending Application No. [1], filed   [2].  A
reference to the prior application must be inserted as the first
sentence of the specification of this application if applicant intends
to rely on the filing date of the prior application under  35 U.S.C.
119(e) or 120.  See  37 CFR 1.78(a).  Also, the current status of all
nonprovisional parent applications referenced should be included.

Examiner Note:

In a continued prosecution application (CPA) filed under  37 CFR
1.53(d), a specific reference in the first sentence of the specification
to the prior application is not required and should not be made. The
specific reference requirement of  35 U.S.C. 120 is met by the
transmittal request for the CPA which is considered to be part of the
CPA application.  37 CFR 1.53(d)(2)(iv) and (d)(7).

If the examiner is aware of a prior application he or she should note it
in an Office action, as indicated above, but should not require the
applicant to call attention to the prior application.

In an application filed under former  37 CFR 1.60 applicant, in the
amendment canceling the nonelected claims, should include directions to
enter "This is a division (continuation) of application No. ..........,
filed ...................." as the first sentence. Where the applicant
has inadvertently failed to do this the wording of Form Paragraph 2.17
should be used. Where the application filed under former  37 CFR 1.60 is
otherwise ready for allowance, the examiner should insert the quoted
sentence by examiner's amendment.

Applications are sometimes filed with a division, continuation, or
continuation-in-part oath or declaration, in which the oath or
declaration refers back to a prior application. If there is no reference
in the specification, in such cases, the examiner should merely call
attention to this fact in his or her Office action, utilizing the
wording of Form Paragraph 2.17.

2.17 Reference in Continuation/Divisional Applications Under Former 37
CFR 1.60

This application filed under former  37 CFR 1.60 lacks the necessary
reference to the prior application.  A statement reading "This is a [1]
of Application No. [2], filed [3]." should be entered following the
title of the invention or as the first sentence of the specification. 
Also, the current status of all nonprovisional parent applications
referenced should be included.

Examiner Note:

1. In bracket 1, insert either --division-- or --continuation--.

2. Use only in former  37 CFR 1.60 applications.  For File Wrapper
Continuing applications under former  37 CFR 1.62, use form paragraph
2.28.

3. Do not use if the prior application is a provisional application.

4. Do not use if the application is a continued prosecution application
(CPA) filed under  37 CFR 1.53(d).

Where the applicant has inadvertently failed to make a reference to the
parent application in an application filed under former  37 CFR 1.60 or
1.62 which is otherwise ready for issue, the examiner should insert the
required reference by examiner's amendment.

Sometimes a pending application is one of a series of applications
wherein the pending application is not copending with the first filed
application but is copending with an intermediate application entitled
to the benefit of the filing date of the first application. If applicant
desires that the pending application have the benefit of the filing date
of the first filed application he or she must, besides making reference
in the specification to the intermediate application, also make
reference in the specification to the first application. See Hovlid v.  
Asari, 305 F. 2d 747, 134 USPQ 162 (9th Cir. 1962); and Sticker Indus.
Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 160 USPQ 177 (7th Cir.
1968).

There is no limit to the number of prior applications through which a
chain of copendency may be traced to obtain the benefit of the filing
date of the earliest of a chain of prior copending applications.   See  
In re Henriksen, 399 F2.d 253, 158 USPQ 224 (CCPA 1968).

A second application which is not copending with the first application,
which includes those called substitutes in MPEP Section  201.09, is not
entitled to the benefit of the filing date of the prior application and
the bars to the grant of a patent are computed from the filing date of
the second application. An applicant is not required to refer to such
applications in the specification of the later filed application, but is
required to otherwise call the examiner's attention to the earlier
application if it or its contents or prosecution are material as defined
in  37 CFR 1.56(b). If the examiner is aware of such a prior abandoned
application he or she should make a reference to it in an Office action
in order that the record of the second application will show this fact.

If an applicant refers to a prior noncopending abandoned application in
the specification, the manner of referring to it should make it evident
that it was abandoned before filing the second.

For notations to be placed on the file wrapper in the case of continuing
applications, see MPEP Section  202.02 and Section  1302.09.

Effective June 8, 1995, Public Law 103-465 amended  35 U.S.C. 154 to
change the term of a patent to 20 years measured from the filing date of
the earliest U.S. application for which benefit under  35 U.S.C. 120,
121, or 365(c) is claimed.  The 20-year patent term applies to all
utility and plant patents issued on applications filed on or after June
8, 1995.  As a result of the 20-year patent term, it is expected, in
certain circumstances, that applicants may cancel their claim to
priority by amending the specification (no supplemental declaration is
necessary) to delete any references to prior applications. In a
continued prosecution application (CPA) filed under  37 CFR 1.53(d), no
amendment may delete the specific reference to a prior application
assigned the same application number.  (Note:  In the CPA, the request
is the specific reference required by  35 U.S.C. 120 and  37 CFR
1.78(a)(2) to every application assigned the same application number
identified in the request.  Further, in a CPA, a specific reference in
the first sentence of the specification following the title to a prior
application assigned the same application number is not required and
should not be made.) Upon entry of the amendment, the examiner must
return the application to the Office of Initial Patent Examination
(OIPE), accompanied by a completed OIPE Data Base Routing Slip, for
correction of the file wrapper label and for updating the PALM data
base.  For 09/ series applications, it will not be necessary to forward
the application to OIPE for correction of the parent application data in
PALM.  The correction or entry of the data in the PALM data base can be
made by technical support staff of the examining group. Upon entry of
the data, a new PALM bib-data sheet should be printed and placed in the
file wrapper. See also MPEP Section  707.05 and Section  1302.09.

SAME INVENTOR OR INVENTORS

The statute also requires that the applications claiming benefit of the
earlier filing date under  35 U.S.C. 119(e) or 120 be filed by an
inventor or inventors named in the previously filed application or
provisional application.

WHEN NOT ENTITLED TO BENEFIT OF FILING DATE

Where the first application (a nonprovisional application) is found to
be fatally defective because of insufficient disclosure to support
allowable claims, a second application 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, 177 F.2d 583, 587, 83 USPQ 277, 281 (2d
Cir. 1949) and cases cited therein.

Any claim in a continuation-in-part application which is directed solely
to subject matter adequately disclosed under  35 U.S.C. 112 in the
parent nonprovisional application is entitled to the benefit of the
filing date of the parent nonprovisional application. However, if a
claim in a continuation-in-part application recites a feature which was
not disclosed or adequately supported by a proper disclosure under  35
U.S.C. 112 in the parent nonprovisional application, but which was first
introduced or adequately supported in the continuation-in-part
application such a claim is entitled only to the filing date of the
continuation-in-part application;   In re Chu, 66 F.3d 292, 36 USPQ2d
1089 (Fed. Cir. 1995);   Transco Products, Inc. v. Performance
Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994); In re
Von Lagenhoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA 1972); and
Chromalloy American Corp. v.   Alloy Surfaces Co., Inc., 339 F. Supp.
859, 874, 173 USPQ 295, 306 (D. Del. 1972).

By way of further illustration, if the claims of a continuation-in-part
application which are only entitled to the continuation-in-part filing
date, "read on" such published, publicly used or sold, or patented
subject matter (e.g., as in a genus- species relationship) a rejection
under  35 U.S.C. 102 would be proper. Cases of interest in this regard
are as follows: Mendenhall v. Cedarapids Inc.,   5 F.3d 1557, 28 USPQ2d
1081 (Fed. Cir. 1993); In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA
1971); In re Hafner, 410 F.2d 1403, 161 USPQ 783 (CCPA 1969); In re
Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958); In re Steenbock, 83
F.2d 912, 30 USPQ 45 (CCPA 1936); Ex parte Hageman, 179 USPQ 747 (Bd.
App. 1971).

---SECTION---201.11(a) Filing of Continuation or Continuation-in-Part
Application During Pendency of International Application Designating the
United States

It is possible to file a U.S. national application under  35 U.S.C.
111(a) and  37 CFR 1.53(b) during the pendency (prior to the
abandonment) of an international application which designates the United
States without completing the requirements for entering the national
stage under  35 U.S.C. 371(c). The ability to take such action is based
on provisions of the United States patent law.  35 U.S.C. 363 provides
that "An international application designating the United States shall
have the effect from its international filing date under article 11 of
the treaty, of a national application for patent regularly filed in the
Patent and Trademark Office...".  35 U.S.C. 371(d) indicates that
failure to timely comply with the requirements of  35 U.S.C. 371(c)
"shall be regarded as abandonment by the parties thereof...". It is
therefore clear that an international application which designates the
United States has the effect of a pending U.S. application from the
international application filing date until its abandonment as to the
United States. The first sentence of  35 U.S.C. 365(c) specifically
provides that "In accordance with the conditions and requirements of
section 120 of this title,... a national application shall be entitled
to the benefit of the filing date of a prior international application
designating the United States." The condition of  35 U.S.C. 120 relating
to the time of filing requires the later application to be "filed before
the patenting or abandonment of or termination of proceedings on the
first application...". The filing of a continuation or
continuation-in-part application of an international application may be
useful to patent applicants where the oath or declaration required by 
35 U.S.C. 371(c)(4) cannot be filed as required by  37 CFR 1.494(h) or
1.495. An applicant filing an application under  35 U.S.C. 111(a) and 
37 CFR 1.53(b) may obtain additional time to file the oath or
declaration under  37 CFR 1.53(f) and 1.136(a).

A continuing application under  35 U.S.C. 365(c) and 120 must be filed
before the abandonment or patenting of the prior nonprovisional
application.  See  37 CFR 1.494 and 1.495.

---SECTION---201.12 Assignment Carries Title

Assignment of an original application carries title to any divisional,
continuation, or reissue application stemming from the original
application and filed after the date of assignment. See MPEP Section 
306.  When the assignment is in a provisional application, see MPEP
Section  306.01.

---SECTION---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 application filed in a foreign
country, to overcome an intervening reference or for similar purposes.
The conditions are specified in  35 U.S.C. 119(a)-(d).

35 U.S.C. 119 Benefit of earlier filing date; right of priority.

(a) 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 country on the date on which the application for
patent for the same invention was first filed in such foreign country,
if the application in this country is filed within twelve months from
the earliest date on which such foreign application was filed; but no
patent shall be granted on any application for patent for an invention
which had been patented or described in a printed publication in any
country more than one year before the date of the actual filing of the
application in this country, or which had been in public use or on sale
in this country more than one year prior to such filing.

(b) 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 and Trademark Office before the patent is
granted, or at such time during the pendency of the application as
required by the Commissioner not earlier than six months after the
filing of the application in this country.  Such certification shall be
made by the patent office of the foreign country in which filed and show
the date of the application and of the filing of the specification and
other papers.  The Commissioner may require a translation of the papers
filed if not in the English language and such other information as he
deems necessary.

(c) In like manner and subject to the same conditions and requirements,
the right provided in this section may be based upon a subsequent
regularly filed application in the same foreign country instead of the
first filed foreign application, provided that any foreign application
filed prior to such subsequent application has been withdrawn,
abandoned, or otherwise disposed of, without having been laid open to
public inspection and without leaving any rights outstanding, and has
not served, nor thereafter shall serve, as a basis for claiming a right
of priority.

(d) Applications for inventors' certificates filed in a foreign country
in which applicants have a right to apply, at their discretion, either
for a patent or for an inventor's certificate shall be treated in this
country in the same manner and have the same effect for purpose of the
right of priority under this section as applications for patents,
subject to the same conditions and requirements of this section as apply
to applications for patents, provided such applicants are entitled to
the benefits of the Stockholm Revision of the Paris Convention at the
time of such filing.

                  +++    

37 CFR 1.55 Claim for foreign priority.

(a) An applicant in a nonprovisional application may claim the benefit
of the filing date of one or more prior foreign applications under the
conditions specified in  35 U.S.C. 119(a) through (d) and 172.  The
claim to priority need be in no special form and may be made by the
attorney or agent if the foreign application is referred to in the oath
or declaration as required by Section  1.63.  The claim for priority and
the certified copy of the foreign application specified in  35 U.S.C.
119(b) must be filed in the case of an interference (Section  1.630),
when necessary to overcome the date of a reference relied upon by the
examiner, when specifically required by the examiner, and in all other
situations, before the patent is granted.  If the claim for priority or
the certified copy of the foreign application is filed after the date
the issue fee is paid, it must be accompanied by a petition requesting
entry and by the fee set forth in Section  1.17(i).  If the certified
copy is not in the English language, a translation need not be filed
except in the case of interference; or when necessary to overcome the
date of a reference relied upon by the examiner; or when specifically
required by the examiner, in which event an English language translation
must be filed together with a statement that the translation of the
certified copy is accurate.

                  +++    

The period of 12 months specified in this section is 6 months in the
case of designs,  35 U.S.C. 172. See MPEP Section  1504.10.

The conditions, for benefit of the filing date of a prior application
filed in a foreign country, may be listed as follows:

(A) 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."

(B) The foreign application must have been filed by the same applicant
(inventor) as the applicant in the United States, or by his or her legal
representatives or assigns.

(C) The application, or its earliest parent United States application
under  35 U.S.C. 120, must have been filed within 12 months from the
date of the earliest foreign filing in a "recognized" country as
explained below.

(D) The foreign application must be for the same invention as the
application in the United States.

(E) In the case where the basis of the claim is an application for an
inventor's certificate, the requirements of  37 CFR 1.55(b) must also be
met.

Applicant may be informed of possible priority rights under  35 U.S.C.
119(a)-(d) by using the wording of Form Paragraph 2.18.

2.18 Right of Priority Under 35 U.S.C. 119(a)-(d)

Applicant is advised of possible benefits under  35 U.S.C. 119(a)-(d),
wherein an application for patent filed in the United States may be
entitled to the benefit of the filing date of a prior application filed
in a foreign country.

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
the U.S. statute.  The right of priority originated in a multilateral
treaty of 1883, to which the United States adhered in 1887, known as the
Paris Convention for the Protection of Industrial Property (Paris
Convention). The treaty is administered by the World Intellectual
Property Organization (WIPO) at Geneva, Switzerland. This treaty has
been revised several times, the latest revision in effect being written
in Stockholm in July 1967 (copy at Appendix P of this Manual). Articles
13-30 of the Stockholm Revision became effective on September 5, 1970.
Articles 1-12 of the Stockholm Revision became effective on August 25,
1973. 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 obligation. There is another
treaty between the United States and some Latin American countries which
also provides for the right of priority. A foreign country may also
provide for this right by reciprocal legislation.

The United States and Taiwan signed an agreement on priority for patent
and trademark applications on April 10, 1996, and Taiwan is now a
country for which the right of priority is recognized in the United
States.  Applicants seeking patent protection in the United States may
avail themselves of the right of priority based on patent applications
filed in Taiwan, on or after April 10, 1996.

Effective January 3, 1995, India became a country for which the right of
priority is recognized in the United States. Accordingly, applicants
seeking patent protection in the United States may avail themselves of
the right of priority based on patent applications filed in India on or
after January 3, 1995.

An application for patent filed in the United States on or after January
1, 1996, by any person who has, or whose legal representatives or
assigns have, previously filed an application for patent in Thailand
shall have the benefit of the filing date in Thailand in accordance with 
35 U.S.C. 119 and 172.

NOTE:  Following is a list of countries with respect to which the right
of priority referred to in  35 U.S.C. 119(a)-(d) has been recognized.
The letter "I" following the name of the country indicates that the
basis for priority in the case of these countries is the Paris
Convention for the Protection of Industrial Property (613 O.G. 23, 53
Stat. 1748). The letter "P" after the name of the country indicates the
basis for priority of these countries is the Inter-American Convention
relating to Inventions, Patents, Designs, and Industrial Models, signed
at Buenos Aires, August 20, 1910 (207 O.G. 935, 38 Stat. 1811). The
letter "L" following the name of the country indicates the basis for
priority is reciprocal legislation in the particular country.

Albania (I),

Algeria (I),

Argentina (I),

Armenia (I),

Australia (I),

Austria (I),

Azerbaijan (I),

Bahamas (I),

Bahrain (I),

Bangladesh (I),

Barbados (I),

Belarus (I),

Belgium (I),

Benin (I),

Bolivia (I,P),

Bosnia and Herzegovina (I),

Brazil (I, P),

Bulgaria (I),

Burkina Faso (I),

Burundi (I),

Cameroon (I),

Canada (I),

Central African Republic (I),

Chad  (I),

Chile (I),

China  (I),

Colombia (I),

Congo (I),

Costa Rica (I,P),

Cote d'Ivoire (I),

Croatia (I),

Cuba (I, P),

Cyprus (I),

Czech Republic (I),

Democratic People's Republic of Korea (I),

Democratic Republic of the Congo (I),

Denmark (I),

Dominican Republic (I,P),

Ecuador (P),

Egypt (I),

El Salvador (I),

Equatorial Guinea (I),

Estonia (I),

Finland (I),

France (I),

Gabon (I),

Gambia (I),

Georgia (I),

Germany (I),

Ghana (I),

Greece (I),

Guinea (I),

Guinea-Bissau (I),

Guatemala (P),

Guyana (I),

Haiti (I,P),

Holy See (I),

Honduras (I,P),

Hungary (I),

Iceland (I),

India (L),

Indonesia (I),

Iran (Islamic Republic of) (I),

Iraq (I),

Ireland (I),

Israel (I),

Italy (I),

Japan (I),

Jordan (I),

Kazakstan (I),

Kenya (I),

Korea, Republic of (I),

Kyrgyzstan (I),

Latvia (I),

Lebanon (I),

Lesotho (I),

Liberia (I),

Libya (I),

Liechtenstein (I),

Lithuania (I),

Luxembourg (I),

Madagascar (I),

Malawi (I),

Malaysia (I),

Mali (I),

Malta (I),

Mauritania (I),

Mauritius (I),

Mexico (I),

Moldova, Republic of (I),

Monaco (I),

Mongolia (I),

Morocco (I),

Netherlands (I),

New Zealand (I),

Nicaragua (I,P),

Niger (I),

Nigeria (I),

Norway (I),

Panama (I),

Paraguay (I,P),

Peru (I),

Philippines (I),

Poland (I),

Portugal (I),

Romania (I),

Russian Federation (I),

Rwanda (I),

Saint Kitts and Nevis (I),

Saint Lucia (I),

Saint Vincent and the Grenadines (I),

San Marino (I),

Senegal, Republic of (I),

Sierra Leone (I),

Singapore (I),

Slovakia (I),

Slovenia (I),

South Africa (I),

Spain (I),

Sri Lanka (I),

Sudan (I),

Suriname (I),

Swaziland (I),

Sweden (I),

Switzerland (I),

Syria (I),

Taiwan (L),

Tajikistan (I),

Tanzania, United Republic of (I),

Thailand (L),

The former Yugoslav Republic of Macedonia (I),

Togo (I),

Trinidad and Tobago (I),

Tunisia (I),

Turkey (I),

Turkmenistan (I),

Uganda (I),

Ukraine (I),

United Arab Emirates (I),

United Kingdom (I),

Uruguay (I, P),

Uzbekistan (I),

Venezuela (I),

Viet Nam (I),

Yugoslavia (I),

Zambia (I),

Zimbabwe (I).

Twelve African Countries have joined together to create a common patent
office and to promulgate a common law for the protection of inventions,
trademarks, and designs. The common patent office is called
"Organisation Africain de la Propriete Intellectuelle" (OAPI) and is
located in Yaounde, Cameroon. The English title is "African Intellectual
Property Organization." The member countries using the OAPI Patent
Office are Benin, Cameroon, Central African Republic, Chad, Congo,
Gabon, Cote d'Ivoire, Mauritania, Niger, Senegal, Republic of Togo, and
Burkina Faso. Since all these countries adhere to the Paris Convention
for the Protection of Industrial Property, priority under  35 U.S.C.
119(a)-(d) may be claimed of an application filed in the OAPI Patent
Office.

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 of the Office of Legislation and International Affairs 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.

RIGHT OF PRIORITY (35 U.S.C. 119(a)-(d) AND 365) BASED ON A FOREIGN
APPLICATION FILED UNDER A BILATERAL OR MULTILATERAL TREATY

Under Article 4A of the Paris Convention for the Protection of
Industrial Property a right of priority may be based either on an
application filed under the national law of a foreign country adhering
to the Convention or on a foreign application filed under a bilateral or
multilateral treaty concluded between two or more such countries.
Examples of such treaties are The Hague Agreement Concerning the
International Deposit of Industrial Designs, the Benelux Designs
Convention, and the Libreville Agreement of September 13, 1962, relating
to the creation of an African Intellectual Property Office. The
Convention on the Grant of European Patents and the Patent Cooperation
Treaty (MPEP Section  201.13(b)) are further examples of such treaties.

A. The Priority Claim

In claiming priority of a foreign application previously filed under
such a treaty, certain information must be supplied to the Patent and
Trademark Office. In addition to the application number and the date of
the filing of the application, the following information is required:
(1) the name of the treaty under which the application was filed and (2)
the name and location of the national or intergovernmental authority
which received such application.

B. Certification of the Priority Papers

35 U.S.C. 119(b) requires the applicant to furnish a certified copy of
priority papers. Certification by the authority empowered under a
bilateral or multilateral treaty to receive applications which give rise
to a right of priority under Article 4A(2) of the Paris Convention will
be deemed to satisfy the certification requirement.

C. Identity of Inventors

The inventors of the U.S. nonprovisional 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 application in the foreign
country may have been filed by the assignee, or by the legal
representative or agent of the inventor which is permitted in some
foreign countries, rather than by the inventor himself, 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.
nonprovisional application by identifying the foreign application and
stating that the foreign application had been filed by the assignee, or
the legal representative, or agent, of the inventor, or on behalf of the
inventor, as the case may be, is acceptable. Joint inventors A and B in
a nonprovisional application filed in the United States Patent and
Trademark Office may properly claim the benefit of an application filed
in a foreign country by A and another application filed in a foreign
country by B, i.e., A and B may each claim the benefit of their foreign
filed applications. See MPEP Section  605.07.

D. Time for Filing U.S. Nonprovisional Application

The United States nonprovisional application, or its earliest parent
nonprovisional application under  35 U.S.C. 120, must have been filed
within 12 months of the earliest foreign filing. In computing this 12
months, the first day is not counted; thus, if an application was filed
in Canada on January 3, 1983, the U.S. nonprovisional application may be
filed on January 3, 1984. The Convention specifies in Article 4C(2) that
"the day of filing is not counted in this period." (This is the usual
method of computing periods, for example a 6-month period for reply to
an Office action dated January 2 does not expire on July 1, but the
reply may be made on July 2.) If the last day of the 12 months is a
Saturday, Sunday, or Federal holiday within the District of Columbia,
the U.S. nonprovisional application is in time if filed on the next
succeeding business day; thus, if the foreign application was filed on
September 4, 1981, the U.S. nonprovisional application is in time if
filed on September 7, 1982, since September 4, 1982, was a Saturday and
September 5, 1982 was a Sunday and September 6, 1982 was a Federal
holiday. Since January 1, 1953, the Office has not received applications
on Saturdays and, in view of  35 U.S.C. 21, and the Convention which
provides "if the last day of the period is an official holiday, or a day
on which the Office is not open for the filing of applications in the
country where protection is claimed, the period shall be extended until
the first following working day" (Article 4C(3), if the 12 months
expires on Saturday, the U.S. application may be filed on the following
Monday. Note Ex parte Olah, 131 USPQ 41 (Bd. App. 1960). See, e.g.,
Dubost v.   U.S. Patent and Trademark Office, 777 F.2d 1561, 1562, 227
USPQ 977, 977 (Fed. Cir. 1985).

E. Filing of Papers During Unscheduled Closings of the Patent and
Trademark Office

37 CFR 1.9(h) provides that the definition of "Federal holiday within
the District of Columbia" includes an official closing of the Office.
When the entire Patent and Trademark Office is officially closed for
business for an entire day, for reasons due to adverse weather or other
causes, the Office will consider each such day a "Federal holiday within
the District of Columbia" under  35 U.S.C. 21.  Any action or fee due on
such a day may be taken, or fee paid, on the next succeeding business
day the Office is open.  In addition, 37 CFR 1.6(a)(1) provides "[t]he
Patent and Trademark Office is not open for the filing of correspondence
on any day that is a Saturday, Sunday or Federal holiday within the
District of Columbia" to clarify that any day that is a Saturday, Sunday
or Federal holiday within the District of Columbia is a day that the
Patent and Trademark Office is not open for the filing of applications
within the meaning of Article 4C(3) of the Paris Convention. Note
further that in accordance with  37 CFR 1.6(a)(2), even when the Office
is not open for the filing of correspondence on any day that is a
Saturday, Sunday or Federal holiday within the District of Columbia,
correspondence deposited as Express Mail with the USPS in accordance
with  37 CFR 1.10 will be considered filed on the date of its deposit,
regardless of whether that date is a Saturday, Sunday or Federal holiday
within the District of Columbia (under  35 U.S.C. 21(b) or  37 CFR 1.7).

When the Patent and Trademark Office is open for business during any
part of a business day between 8:30 a.m. and 5:00 p.m., papers are due
on that day even though the Office may be officially closed for some
period of time during the business day because of an unscheduled event.
The procedures of  37 CFR 1.10 may be used for filing applications.

Information regarding whether or not the Office is officially closed on
any particular day may be obtained by calling (703) 308-4357 which
transposes to (703) 308-HELP.

F. First Foreign Application

The 12 months is from earliest foreign filing except as provided in 35
U.S.C 119(c). If an inventor has filed an application in France on
January 4, 1982, and an identical application in the United Kingdom on
March 3, 1982, and then files in the United States on February 2, 1983,
the inventor is not entitled to the right of priority at all; the
inventor 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 the inventor would not be entitled to
the benefit of the date of the United Kingdom application since this
application is not the first one filed. Ahrens v.   Gray, 1931 C.D. 9,
402 O.G. 261 (Bd. App. 1929).  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 modified  35 U.S.C. 119(c) to extend the right of
priority to "subsequent" foreign applications if one earlier filed had
been withdrawn, abandoned, or otherwise disposed of, under certain
conditions.

The United Kingdom 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 application
does not affect the status of the application 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.
See In re Clamp, 151 USPQ 423 (Comm'r Pat. 1966).

If an applicant has filed two foreign applications 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 application 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 extends to overcoming the
effects of intervening references or uses, but there are certain
restrictions. For example, the 1 year bar of  35 U.S.C. 102(b) dates
from the U.S. filing date and not from the foreign filing date; thus if
an invention was described in a printed publication, or was in public
use in this country, in November 1981, a foreign application filed in
January 1982, and a U.S. application filed in December 1982, granting a
patent on the U.S. application is barred by the printed publication or
public use occurring more than one year prior to its actual filing in
the United States.

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

---SECTION---201.13(a) Right of Priority Based Upon an Application for
an Inventor's Certificate

37 CFR 1.55 Claim for foreign priority.

                  +++    

(b) An applicant in a nonprovisional application may under certain
circumstances claim priority on the basis of one or more applications
for an inventor's certificate in a country granting both inventor's
certificates and patents.  To claim the right of priority on the basis
of an application for an inventor's certificate in such a country under 
35 U.S.C. 119(d), the applicant when submitting a claim for such right
as specified in paragraph (a) of this section, shall include an
affidavit or declaration. The affidavit or declaration must include a
specific statement that, upon an investigation, he or she is satisfied
that to the best of his or her knowledge, the applicant, when filing the
application for the inventor's certificate, had the option to file an
application for either a patent or an inventor's certificate as to the
subject matter of the identified claim or claims forming the basis for
the claim of priority.

An inventor's certificate may form the basis for rights of priority
under  35 U.S.C. 119(d) only when the country in which they are filed
gives to applicants, at their discretion, the right to apply, on the
same invention, either for a patent or for an inventor's certificate.
The affidavit or declaration specified under  37 CFR 1.55(b) is only
required for the purpose of ascertaining whether, in the country where
the application for an inventor's certificate originated, this option
generally existed for applicants with respect to the particular subject
matter of the invention involved. The requirements of  35 U.S.C. 119(d)
and  37 CFR 1.55(b) are not intended, however, to probe into the
eligibility of the particular applicant to exercise the option in the
particular priority application involved.

It is recognized that certain countries that grant inventors'
certificates also provide by law that their own nationals who are
employed in state enterprises may only receive inventors' certificates
and not patents on inventions made in connection with their employment.
This will not impair their right to be granted priority in the United
States based on the filing of the inventor's certificate.

Accordingly, affidavits or declarations filed pursuant to  37 CFR
1.55(b) need only show that in the country in which the original
inventor's certificate was filed, applicants generally have the right to
apply at their own option either for a patent or an inventor's
certificate as to the particular subject matter of the invention.

Priority rights on the basis of an inventor's certificate application
will be honored only if the applicant had the option or discretion to
file for either an inventor's certificate or a patent on his or her
invention in his or her home country. Certain countries which grant both
patents and inventor's certificates issue only inventor's certificates
on certain subject matter, generally pharmaceuticals, foodstuffs, and
cosmetics.

To ensure compliance with the treaty and statute,  37 CFR 1.55(b)
provides that at the time of claiming the benefit of priority for an
inventor's certificate, the applicant or his or her attorney must submit
an affidavit or declaration stating that the applicant when filing his
or her application for the inventor's certificate had the option either
to file for a patent or an inventor's certificate as to the subject
matter forming the basis for the claim of priority.

Effective Date

37 CFR 1.55(b) originally went into effect on August 25, 1973, which is
the date on which the international treaty entered into force with
respect to the United States. The rights of priority based on an earlier
filed inventor's certificate shall be granted only with respect to U.S.
patent applications where both the earlier application and the U.S.
patent application were filed in their respective countries following
this effective date.

---SECTION---201.13(b) Right of Priority Based Upon an International
Application Filed Under the Patent Cooperation Treaty

35 U.S.C. 365 Right of priority; benefit of the filing date of a prior
application.

(a) In accordance with the conditions and requirements of subsections
(a) through (d) of section 119 of this title, a national application
shall be entitled to the right of priority based on a prior filed
international application which designated at least one country other
than the United States.

(b) In accordance with the conditions and requirements of section 119(a)
of this title and the treaty and the Regulations, an international
application designating the United States shall be entitled to the right
of priority based on a prior foreign application, or a prior
international application designating at least one country other than
the United States.

(c) In accordance with the conditions and requirements of section 120 of
this title, an international application designating the United States
shall be entitled to the benefit of the filing date of a prior national
application or a prior international application designating the United
States, and a national application shall be entitled to the benefit of
the filing date of a prior international application designating the
United States. If any claim for the benefit of an earlier filing date is
based on a prior international application which designated but did not
originate in the United States, the Commissioner may require the filing
in the Patent and Trademark Office of a certified copy of such
application together with a translation thereof into the English
language, if it was filed in another language.

35 U.S.C. 365(a) provides that a national application shall be entitled
to the right of priority based on a prior international application of
whatever origin, which designated any country other than, or in addition
to, the United States. Of course, the conditions prescribed by section
119(a)-(d) of title 35 U.S.C., which deals with the right of priority
based on earlier filed foreign applications, must be complied with.

35 U.S.C. 365(b) provides that an international application designating
the United States shall be entitled to the right of priority of a prior
foreign application which may either be another international
application or a regularly filed foreign application. The international
application upon which the claim of priority is based can either have
been filed in the United States or a foreign country; however, it must
contain the designation of at least one country other than, or in
addition to, the United States.

As far as the actual place of filing is concerned, for the purpose of 
35 U.S.C. 365(a) and (b) and  35 U.S.C. 119(a)-(d), an international
application designating a country is considered to be a national
application regularly filed in that country on the international filing
date irrespective of whether it was physically filed in that country, in
another country, or in an intergovernmental organization acting as
Receiving Office for a country.

An international application which seeks to establish the right of
priority will have to comply with the conditions and requirements as
prescribed by the Treaty and the PCT Regulations, in order to avoid
rejection of the claim to the right of priority. Reference is especially
made to the requirement of making a declaration of the claim of priority
at the time of filing of the international application (Article 8(1) of
the Treaty and Rule 4.10 of the PCT Regulations) and the requirement of
either filing a certified copy of the priority document with the
international application, or submitting a certified copy of the
priority document to the International Bureau at a certain time (Rule 17
of the PCT Regulations). The submission of the priority document to the
International Bureau is only required in those instances where priority
is based on an earlier filed foreign national application.

Thus, if the priority document is an earlier national application and
did not accompany the international application when filed with the
Receiving Office, an applicant must submit such document to the
International Bureau not later than 16 months after the priority date. 
However, should an applicant request early processing of his
international application in accordance with Article 23(2) of the
Treaty, the priority document would have to be submitted to the
International Bureau at that time (Rule 17.1(a) of the PCT Regulations). 
If priority is based on an earlier international application, a copy
does not have to be filed, either with the Receiving Office or the
International Bureau, since the latter is already in possession of such
international application.

The formal requirements for obtaining the right of priority under  35
U.S.C. 365 differ somewhat from those imposed by  35 U.S.C. 119(a)-(d),
although the 1-year bar of  35 U.S.C. 102(b), as required by the last
clause of section 119(a) is the same. However, the substantive right of
priority is the same, in that it is derived from Article 4 of the Paris
Convention for the Protection of Industrial Property (Article 8(2) of
the Treaty).

35 U.S.C. 365(c) recognizes the benefit of the filing date of an earlier
application under  35 U.S.C. 120.  Any international application
designating the United States, whether filed with a Receiving Office in
this country or abroad, and even though other countries may have also
been designated, has the effect of a regular national application in the
United States, as of the international filing date. As such, any later
filed national application, or international application designating the
United States, may claim the benefit of the filing date of an earlier
international application designating the United States, if the
requirements and conditions of section 120 of title 35 U.S.C. are
fulfilled. Under the same circumstances, the benefit of the earlier
filing date of a national application may be obtained in a later filed
international application designating the United States. In those
instances, where the applicant relies on an international application
designating, but not originating in, the United States the Commissioner
may require submission of a copy of such application together with an
English translation, since in some instances, and for various reasons, a
copy of that international application or its translation may not
otherwise be filed in the Patent and Trademark Office. Rule 17 The
Priority Document

17.1. Obligation to Submit Copy of Earlier National or International
Application

(a) Where the priority of an earlier national or international
application is claimed under Article 8, a copy of that earlier
application, certified by the authority with which it was filed ("the
priority document"), shall, unless already filed with the receiving
Office together with the international application in which the priority
claim is made, and subject to paragraph (b), be submitted by the
applicant to the International Bureau or to the receiving Office not
later than 16 months after the priority date, provided that any copy of
the said earlier application which is received by the International
Bureau after the expiration of that time limit shall be considered to
have been received by that Bureau on the last day of that time limit if
it reaches it before the date of international publication of the
international application.

(b) Where the priority document is issued by the receiving Office, the
applicant may, instead of submitting the priority document, request the
receiving Office to prepare and transmit the priority document to the
International Bureau. Such request shall be made not later than 16
months after the priority date and may be subjected by the receiving
Office to the payment of a fee.

(c) If the requirements of neither of the two preceding paragraphs are
complied with, any designated State may disregard the priority claim,
provided that no designated Office shall disregard the priority claim
before giving the applicant an opportunity to furnish the priority
document within a time limit which shall be reasonable under the
circumstances.

17.2. Availability of Copies

(a) Where the applicant has complied with Rule 17.1(a) or (b), the
International Bureau shall, at the specific request of the designated
Office, promptly but not prior to the international publication of the
international application, furnish a copy of the priority document to
that Office.  No such Office shall ask the applicant himself to furnish
it with a copy.  The applicant shall not be required to furnish a
translation to the designated Office before the expiration of the
applicable time limit under Article 22.  Where the applicant makes an
express request to the designated Office under Article 23(2) prior to
the international publication of the international application, the
International Bureau shall, at the specific request of the designated
Office, furnish a copy of the priority document to that Office promptly
after receiving it.

(b) The International Bureau shall not make copies of the priority
document available to the public prior to the international publication
of the international application.

(c) Where the international application has been published under Article
21, the International Bureau shall furnish a copy of the priority
document to any person upon request and subject to reimbursement of the
cost unless, prior to that publication:

(i) the international application was withdrawn,

(ii) the relevant priority claim was withdrawn or considered, under Rule
26bis.2 not to have been made.

(iii) [Deleted]

(d) [Deleted]

37 CFR 1.451 The priority claim and priority document in an
international application.

(a) The claim for priority must, subject to paragraph (d) of this
section,  be made on the Request (PCT Rule 4.10) in a manner complying
with sections 110 and 115 of the Administrative Instructions.

(b) Whenever the priority of an earlier United States national
application is claimed in an international application, the applicant
may request in a letter of transmittal accompanying the international
application upon filing with the United States Receiving Office or in a
separate letter filed in the Receiving Office not later than 16 months
after the priority date, that the Patent and Trademark Office prepare a
certified copy of the national application for transmittal to the
International Bureau (PCT Article 8 and PCT Rule 17). The fee for
preparing a certified copy is stated in Section  1.19(b)(1).

(c) If a certified copy of the priority document is not submitted
together with the international application on filing, or, if the
priority application was filed in the United States and a request and
appropriate payment for preparation of such a certified copy do not
accompany the international application on filing or are not filed
within 16 months of the priority date, the certified copy of the
priority document must be furnished by the applicant to the
International Bureau or to the United States Receiving Office within the
time limit specified in PCT Rule 17.1(a).

(d) The applicant may correct or add a priority claim in accordance with
PCT Rule 26 bis .1.

---SECTION---201.14 Right of Priority, Formal Requirements

Under the statute (35 U.S.C. 119(b)), an applicant who wishes to secure
the right of priority must comply with certain formal requirements
within a time specified. If these requirements are not complied with the
right of priority is lost and cannot thereafter be asserted.

The requirements of the statute are (a) that the applicant must file a
claim for the right and (b) he or she must also file a certified copy of
the original foreign application; these papers must be filed within a
certain time limit. The maximum time limit specified in the statute is
that the claim for priority and the priority papers must be filed before
the patent is granted, but the statute gives the Commissioner authority
to set this time limit at an earlier time during the pendency of the
application. Where a claim for priority under  35 U.S.C. 119(b) has not
been made in the parent application, the claim for priority may be made
in a continued prosecution application (CPA) filed under  37 CFR 1.53(d)
or FWC application filed under former  37 CFR 1.62, provided the parent
application has been filed within 12 months from the date of the
earliest foreign filing. If the required papers are not filed within the
time limit set the right of priority is lost.  A reissue was granted in
Brenner v.   State of Israel, 158 USPQ 584 (D.C. Cir. 1968), where the
only ground urged was failure to file a certified copy of the original
foreign application to obtain the right of foreign priority under  35
U.S.C. 119 before the patent was granted.

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 Commissioner authority to require a translation of the foreign
documents if not in the English language and such other information as
the Commissioner may deem necessary.

37 CFR 1.63 requires that the oath or declaration shall state in any
application in which a claim for foreign priority is made pursuant to 
37 CFR 1.55 must identify the foreign application for patent or
inventors' certificate on which priority is claimed, and any foreign
applications having a filing date before that of the application on
which priority is claimed, by specifying the application number,
country, day, month, and year of its filing.

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

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

The time for filing the priority papers required by the statute is
specified in  37 CFR 1.55(a).

37 CFR 1.55 Claim for foreign priority.

(a) An applicant in a nonprovisional application may claim the benefit
of the filing date of one or more prior foreign applications under the
conditions specified in  35 U.S.C. 119(a) through (d) and 172.  The
claim to priority need be in no special form and may be made by the
attorney or agent if the foreign application is referred to in the oath
or declaration as required by Section  1.63.  The claim for priority and
the certified copy of the foreign application specified in  35 U.S.C.
119(b) must be filed in the case of an interference (Section  1.630),
when necessary to overcome the date of a reference relied upon by the
examiner, when specifically required by the examiner, and in all other
situations, before the patent is granted.  If the claim for priority or
the certified copy of the foreign application is filed after the date
the issue fee is paid, it must be accompanied by a petition requesting
entry and by the fee set forth in Section  1.17(i).  If the certified
copy is not in the English language, a translation need not be filed
except in the case of interference; or when necessary to overcome the
date of a reference relied upon by the examiner; or when specifically
required by the examiner, in which event an English language translation
must be filed together with a statement that the translation of the
certified copy is accurate.

                  +++    

It should first be noted that the Commissioner has by rule specified an
earlier ultimate date than the date the patent is granted for filing a
claim and a certified copy.  The latest time at which the papers may be
filed without petition is the date of the payment of the issue fee,
except that, under certain circumstances, they are required at an
earlier date. In all cases, the papers must be filed before the patent
issues. These circumstances are specified in the rule as:

(A) in the case of interferences in which event the papers must be filed
within the time specified in the interference rules,

(B) when necessary to overcome the date of a reference relied on by the
examiner, and

(C) when specifically required by the examiner.

In view of the shortened periods for prosecution leading to allowances,
it is recommended that priority papers be filed as early as possible.
Although  37 CFR 1.55(a) permits the filing of priority papers up to and
including the date for payment of the issue fee, it is advisable that
such papers be filed promptly after filing the application. 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. Occasionally, a new
oath or declaration may be necessary where the original oath or
declaration 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
inconsistencies that exist or to supply any additional documents that
may be necessary.

It is also suggested that a pencil notation of the application number of
the corresponding U.S. application be placed on the priority papers.
Such notation should be placed directly on the priority papers
themselves even where a cover letter is attached bearing the U.S.
application data. Experience indicates that cover letters and priority
papers occasionally become separated, and without the suggested pencil
notations on the priority papers, correlating them with the
corresponding U.S. application becomes exceedingly difficult, frequently
resulting in severe problems for both the Office and applicant.
Adherence to the foregoing suggestion for making a pencil notation on
the priority document of the U.S. application data will result in a
substantial lessening of the problem.

Priority papers filed after the date of payment of the issue fee will be
accepted and acknowledged only if filed before the patent is granted and
if a petition with fee (37 CFR 1.17(i)) pursuant to  37 CFR 1.55(a) is
filed and granted.

---SECTION---201.14(b) Right of Priority, Papers Required

The filing of the priority papers under  35 U.S.C. 119(a)-(d) makes the
record of the file of the United States patent complete. The Patent and
Trademark Office does not normally examine the papers to determine
whether the applicant is in fact entitled to the right of priority and
does not grant or refuse the right of priority, except as described in
MPEP Section  201.15 and in cases of interferences.

The papers required are the claim for priority and the certified copy of
the foreign application. The claim to priority need be in no special
form, and may be made by the attorney or agent at the time of
transmitting the certified copy if the foreign application is the one
referred to in the oath or declaration of the U.S. application. No
special language is required in making the claim for priority, and any
expression which can be reasonably interpreted as claiming the benefit
of the foreign application is accepted as the claim for priority. The
claim for priority may appear in the oath or declaration 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 applications as filed with
a certificate of the foreign patent office giving certain information.
"Application" in this connection is not considered to include formal
papers such as a petition. A copy of the foreign 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 certification indicates that it corresponds to the
application as filed.  A French patent stamped "Service De La Propriete
Industrielle - Conforme Aux Pieces Deposees A L' Appui de La Demande"
and additionally bearing a signed seal is also acceptable in lieu of a
certified copy of the French application.

When the claim to priority and the certified copy of the foreign
application are received while the application is pending before the
examiner, the examiner should make no examination of the papers except
to see that they correspond in number, date and country to the
application identified in the oath or declaration 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 interference, it is not necessary to
file an additional certified copy in the application file. The
administrative patent judge will place them in the application file.

LATER FILED APPLICATIONS, REISSUES

Where the benefit of a foreign filing date based on a foreign
application is claimed in a later filed application (i.e., continuation,
continuation-in-part, division) or in a reissue application and a
certified copy of the foreign application as filed, has been filed in a
parent or related application, it is not necessary to file an additional
certified copy in the later application.  A reminder of this provision
is found in Form Paragraph 2.20. The applicant when making such claim
for priority may simply identify the application containing the
certified copy. In such cases, the examiner should acknowledge the claim
on form PTOL-326. Note copy in MPEP Section  707.

If the applicant fails to call attention to the fact that the certified
copy is in the parent or related application and the examiner is aware
of the fact that a claim for priority under  35 U.S.C. 119(a)-(d) was
made in the parent application, the examiner should call applicant's
attention to these facts in an Office action, so that if a patent issues
on the later or reissue application, the priority data will appear in
the patent. In such cases, the language of Form Paragraph 2.20 should be
used.

2.20 Priority Papers in Parent Application

Applicant is reminded that in order for a patent issuing on the instant
application to obtain the benefit of priority based on priority papers
filed in parent Application No. [1] under  35 U.S.C. 119(a)-(d), a claim
for such foreign priority must be made in this application.  In making
such claim, applicant may simply identify the application containing the
priority papers.

Where the benefit of a foreign filing date, based on a foreign
application, is claimed in a later filed application or in a reissue
application and a certified copy of the foreign application, as filed,
has not been filed in a parent or related application, a claim for
priority may be made in the later application. In re Tangsrud, 184 USPQ
746 (Comm'r Pat. 1973). When such a claim is made in the later
application and a certified copy of the foreign application is placed
therein, the examiner should acknowledge the claim on form PTOL-326. 
Note copy in MPEP Section  707.

WHERE AN ACTUAL MODEL WAS ORIGINALLY FILED IN GERMANY

The German design statute does not permit an applicant having an
establishment or domicile in the Federal Republic of Germany to file
design patent applications with the German Patent Office. These German
applicants can only obtain design protection by filing papers or an
actual deposit of a model with the judicial authority ("Amtsgericht") of
their principal establishment or domicile. Filing with the German Patent
Office is exclusively reserved for applicants who have neither an
establishment or domicile in the Federal Republic of Germany. The
deposit in an "Amtsgericht" has the same effect as if deposited at the
German Patent Office and results in a "Geschmacksmuster" which is
effective throughout Germany.

In implementing the Paris Convention,  35 U.S.C. 119(a)-(d) requires
that a copy of the original foreign application, specification, and
drawings certified by the patent office of the foreign country in which
filed, shall be submitted to the Patent and Trademark Office, in order
for an applicant to be entitled to the right of priority in the United
States.

Article 4, section A(2) of the Paris Convention however states that
"(a)ny filing that is equivalent to a regular national filing under the
domestic legislation of any country of the Union . . . shall be
recognized as giving rise to the right of priority." Article 4D(3) of
the Convention further provides that countries of the Union may require
any person making a declaration of priority to produce a copy of the
previously filed application (description, drawings, etc.) certified as
correct by the authority which received this application.

As far as the physical production of a copy of the earlier filed paper
application is concerned, an applicant should have no difficulty in
providing a copy, certified by the authority which received it, if the
earlier filed application contained drawings illustrating the design. A
problem, however, arises when the only prior "regular national filing"
consisted of the deposit of an actual model of the design.  35 U.S.C.
119(a)-(d) is silent on this subject.

Therefore, the Patent and Trademark Office will receive as evidence of
an earlier filed German design application under  35 U.S.C. 119(a)-(d),
drawings or acceptable clear photographs of the deposited model
faithfully reproducing the design embodied therein together with other
required information, certified as being a true copy by an official of
the court with which the model was originally deposited.

35 U.S.C. 119(a)-(d) also provides for the certification of the earlier
filed application by the patent office of the foreign country in which
it was filed. Because Article 4D(3) of the Paris Convention which  35
U.S.C. 119(a)-(d) implements refers to certification ". . . by the
authority which received such application . . .", the reference to
"patent office" in the statute is construed to extend also to the
authority which is in charge of the design register, i.e., the
applicable German court. As a consequence, an additional certification
by the German Patent Office will not be necessary especially since
Article 4D(3) of the Paris Convention provides that authentication shall
not be required.

Although, as stated above, a "regular national filing" gives rise to the
right of priority, the mere submission of a certified copy of the
earlier filed foreign application, however, may not be sufficient to
perfect that right in this country. For example, among other things, an
application filed in a foreign country must contain a disclosure of the
invention adequate to satisfy the requirements of  35 U.S.C. 112, in
order to form the basis for the right of priority in a later filed
United States application.

---SECTION---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  35 U.S.C. 119(a)-(d) are received they are to be
endorsed on the contents page of the file as "Letter (or amendment) and
foreign application".  Assuming that the papers 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 on form PTOL-326 or by use of Form Paragraph 2.26.

2.26 Claimed Foreign Priority -  Papers Filed

Receipt is acknowledged of papers submitted under  35 U.S.C. 119(a)-(d),
which papers have been placed of record in the file.

Where the priority papers have been filed in another application, use
Form Paragraph 2.27.

2.27 Acknowledge Foreign Priority Paper in Parent

Acknowledgment is made of applicant's claim for foreign priority under 
35 U.S.C. 119 (a)-(d).  The certified copy has been filed in parent
Application No. [1], filed on [2].

Examiner Note:

1. For problems with foreign priority, see form paragraphs 2.18 to 2.24.

2. In bracket 1, insert series code and serial no. of parent.

The examiner will enter the information specified in MPEP Section 
202.03 on the face of the file wrapper or on the PALM bib-data sheet for
09/ series applications.

PAPERS INCONSISTENT

If the certified copy filed does not correspond to the foreign
application identified in the application oath or declaration, or if the
application oath or declaration does not refer to the particular foreign
application, the applicant has not complied with the requirements of the
rule relating to the oath or declaration. In such instances, the
examiner's letter, after acknowledging receipt of the papers, should
require the applicant to explain the inconsistency and to file a new
oath or declaration stating correctly the facts concerning foreign
applications required by  37 CFR 1.63 by using Form Paragraph 2.21.

2.21 Oath, Declaration Does Not Contain Reference to Foreign Filing

Receipt is acknowledged of papers filed under  35 U.S.C. 119(a)-(d)
based on an application filed in   [1] on [2].  Applicant has not
complied with the requirements of  37 CFR 1.63(c), since the oath or
declaration does not acknowledge the filing of any foreign application. 
A new oath or declaration is required in the body of which the present
application should be identified by application number and filing date.

Other situations requiring some action by the examiner are exemplified
by other Form Paragraphs.

NO CLAIM FOR PRIORITY

Where applicant has filed a certified copy but has not made a claim for
priority, use Form Paragraph 2.22.

2.22 Certified Copy Filed, But No Claim Made

Receipt is acknowledged of a certified copy of the   [1] application
referred to in the oath or declaration.  If this copy is being filed to
obtain the benefits of the foreign filing date under  35 U.S.C.
119(a)-(d), applicant should also file a claim for such priority as
required by  35 U.S.C. 119(b).

NOTE: Where the applicant's accompanying letter states that the
certified copy is filed for priority purposes or for the convention
date, it is accepted as a claim for priority.

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

Where the earlier foreign application was filed more than 12 months
prior to the U.S. application, use Form Paragraph 2.23.

2.23 Foreign Filing More Than 12 Months Earlier

Acknowledgment is made of applicant's claim for priority under  35
U.S.C. 119(a)-(d) based upon an application filed in [1] on   [2].  A
claim for priority under  35 U.S.C. 119(a)-(d) cannot be based on said
application, since the United States application was filed more than
twelve months thereafter.

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

For example, where a British provisional specification was filed more
than a year before a U.S. application, but the British complete
application was filed within the year, and certified copies of both were
submitted, language similar to the following should be used: "Receipt is
acknowledged of papers filed on September 18, 1979, purporting to comply
with the requirements of  35 U.S.C. 119(a)-(d).  It is not seen how the
claim for priority can be based on the British specification filed
January 23, 1978, 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, 1978, for such subject matter as was not disclosed in
the provisional specification."

CERTIFIED COPY NOT THE FIRST FOREIGN APPLICATION

2.24 Claimed Foreign Priority Date Not the Earliest Date

Receipt is acknowledged of papers filed on [1] purporting to comply with
the requirements of  35 U.S.C. 119(a)-(d) and they have been placed of
record in the file.  Attention is directed to the fact that the date for
which foreign priority is claimed is not the date of the first filed
foreign application acknowledged in the oath or declaration.

NO CERTIFIED COPY

Where priority is claimed but no certified copy of the foreign
application has been filed, use Form Paragraph 2.25.

2.25 Claimed Foreign Priority, No Papers Filed

Acknowledgment is made of applicant's claim for foreign priority based
on an application filed in [1] on [2].  It is noted, however, that
applicant has not filed a certified copy of the [3] application as
required by 35 U.S.C. 119(b).

Any unusual situation may be referred to the group director.

APPLICATION IN ISSUE

When priority papers for applications which have been sent to the
Publishing Division are received, the priority papers should be sent to
the Publishing Division.  The Publishing Division will acknowledge
receipt of all such priority papers.  If the issue fee has been paid
applicant must petition under 37 CFR 1.55(a).

RETURN OF PAPERS

It is sometimes necessary for the examiner to return papers filed under
35 U.S.C. 119(a)-(d) either upon request of the applicant, for example,
to obtain a translation of the certified copy of the foreign
application, or because they fail to meet a basic requirement of the
statute, such as where all foreign applications were filed more than a
year prior to the U.S. filing date.

When the papers have not been given a paper number and endorsed on the
file wrapper, it is not necessary to secure approval of the Commissioner
for their return but they should be sent to the group director for
cancellation of the Office stamps. Where the papers have been made of
record in the file (given a paper number and endorsed on the file
wrapper), a request for permission to return the papers should be
addressed to the Commissioner of Patents and Trademarks and forwarded to
the Group Director for approval. Where the return is approved, the
written approval should be placed in the file wrapper. Any questions
relating to the return of papers filed under 35 U.S.C. 119(a)-(d) should
be directed to the Office of the Assistant Commissioner for Patents.

FILLING OUT THE FOREIGN PRIORITY SECTION OF THE FILE WRAPPER LABEL
(PTO-436L)

Where foreign applications are listed on the 37 CFR 1.63 oath or
declaration, the examiner should check that such foreign applications
are properly listed on the file wrapper, correcting errors of typography
or format as necessary, and initialing the "verified" line when the
information on the file wrapper, matches the oath or declaration. See
MPEP Section  202.03.  Should there be an error on the oath or
declaration itself, the examiner should require a new oath or
declaration. If a foreign application listed on the oath or declaration
is not listed on the file wrapper, the examiner should print in black
ink the country, application number, and filing date under "Foreign/PCT
Applications" on the file wrapper or on the PALM bib-data sheet.
Applications listed on the file wrapper but filed in countries not
qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined
through in red ink. A listing of countries qualifying for benefits under
35 U.S.C. 119(a)-(d) appears at MPEP Section  201.13.

Below the "Foreign/PCT applications" portion, the "yes" box for "Foreign
priority claimed" should be checked only when priority has been properly
claimed as provided in 37 CFR 1.55. Otherwise, the Examiner should check
"no". Where a claim is made for one or more listed foreign applications
and not for one or more other listed foreign applications, the data on
the file wrapper concerning the unclaimed applications should be lined
through in pencil and the "yes" box checked.

The "yes" box for " 35 U.S.C. 119 conditions met" should be checked when
there are any foreign applications listed that meet all of the
requirements of 35 U.S.C. 119(a)-(d). In such cases, any listed foreign
applica tion that does not meet all of the requirements of 35 U.S.C.
119(a)-(d) should be lined through in pencil.

---SECTION---201.14(d) Proper Identification of Priority Application

In order to help overcome problems in determining the proper
identification of priority applications for patent documentation and
printing purposes, the following tables have been prepared which set out
for various countries the forms of acceptable presentation of
application numbers.

The tables should enable applicants, examiners and others to extract
from the various formats the minimum required data which comprises a
proper citation.

Proper identification of priority applications is essential to
establishing accurate and complete relationships among various patent
documents which reflect the same invention. Knowledge of these
relationships is essential to search file management, technology
documentation and various other purposes.

The tables show the forms of presentation of application numbers as used
in the records of the source or originating patent office. They also
show, under the heading "Minimum Significant Part of the Number", the
simplified form of presentation which should be used in United States
Patent and Trademark Office records.

Note particularly that in the simplified format that:

(A) Alpha symbols preceding numerals are eliminated in all cases except
Hungary.

(B) A decimal character and numerical subset as part of a number is
eliminated in all cases except France.

(C) Use of the dash (-) is reduced, but is still an essential element of
application numbers, in the case of Czechoslovakia and Japan.



MINIMUM SIGNIFICANT PART OF AN APPLICATION NUMBER PROVIDING UNIQUE
IDENTIFICATION OF AN APPLICATION



  Table I-Countries Using Annual Application Number Series

Country #	Example of application number at source	Minimum significant
part of the number	Remarks

Austria  [AT]	A 12116/69	12116/69	The letter A is common to all patent
applications.

Czechoslovakia [CS]	PV3628-72	3628-72	PV is an abbreviation meaning
"application of invention."

Denmark [DK]	68/2986	68/2986	

Egypt [EG]	487-1968	487-1968	

Finland [FI]	3032/69 (old numbering system) 752032 (new numbering
system)	3032/69  752032	  New numbering system introduced on January 1,
1975.  First two digits indicate year of application.

France [FR]	69.38066 73 19346	68.38066 73 19346	 Deletion of the
intermediary full stop from this number onwards.

Note:  All French applications are numbered in a single annual series,
e.g., demande de brevet, demande de certificate d'addition (first
addition, second addition, etc.)	Annual series of numbers is used for
all applications of patent documents. The number allotted to an
application at its filing (national registration number) is also the
number of the granted patent.

Germany, Fed. Rep. of [DE]	P 1940738//6-24    G 6947580.5	1940738    *
6947580	P=Patent.  The first two digits of the number represent the last
two digits of the year of application less 50 (e.g., 1969 less 50=19;
1973 less 50=23). The first digit after the slash is an error control
digit.  The two digits following the dash indicate the examining
division. G= Gebrauschsmuster.  The first two digits of the number
represent the last two digits of the year of application.  The
difference in numbering scheme of the first two digits affords unique
identification of this type of application.  However, see note below
(*).  The digit after the period is for error control.

Ireland	1152/69	1152/69	

Italy [IT]	28039-A/70	28039/70	Application numbers are not presented on
published patent documents or given in an official gazette.  An
exclusive block of application numbers is given annually to each of 93
provincial bureaus where patent applications may be filed.  In 1973,
90,000 numbers were allotted, wherein an estimated total of 30,000
applications were expected to be filed.  While, as a consequence, gaps
will exist in the ultimately used numbers, each application has a unique
number.  For this purpose, neither the dash nor the letter identifying
the receiving bureau, which follows the application number, is needed.

Japan [JP]	46-69807 46-81861	46-69807 *46-81861	The two digits before
the dash indicate the year (1925 or 1988) of the Emperor's reign in
which the application was filed (46=1971).  Patent and utility model
applications are numbered in separate series.

Netherlands [NL]	7015038	7015038	First two digits indicate year of
application.

Norway [NO]	1748/70 (old numbering system) 74001 (new numbering system)	
1748/70  74001	  New numbering system introduced on January 1, 1974.
First two digits indicate year of application.



  Table I-Countries Using Annual Application Number Series-Continued

Country #	Example of application number at source	Minimum significant
part of the number	Remarks

South Africa [ZA]	70/4865	70/4865	

Sweden [SE]	16414/70 7300001-0 (new system)	16414/70 7300001	The new
numbering system was introduced January 1, 1973. First two digits
indicate year of application.  The digit after the dash is used for
computer control.

Switzerland [CH]	15978/70	15978/70	

United Kingdom [GB]	41352/70	41352/70	

Yugoslavia [YU]	P1135/66	1135/66	

Zambia [ZM]	142/70	142/70	

Argentina [AR]	231790	231790	

Australia [AU]	59195/69	59195/69	Long series spread over several years.
New series started in 1970.

Belgium [BE]	96469	96469	Application numbers are not presented on
published patent documents or given in an official gazette.  A series of
parallel numbers is provided to each of 10 offices which, respectively,
may receive applications (control office + 9 provincial bureaus) and
assign application numbers.  Series was started in 1958. Since an
application number does not uniquely identify a BE document, the patent
number is often cited as the "priority application number."

Brazil [BR]	222986	222986	

Bulgaria [BG]	11572	11572	

Canada [CA]	103828	103828 	

Colombia [CO]	126050	126050	



  Table II-Countries Using Other Than Application Number Series

Country #	Example of application number at source	Minimum significant
part of the number	Remarks

Brazil [BR]	222986	222986	

Bulgaria [BG]	11572	11572	

Canada [CA]	103828	103828	

Colombia [CO]	126050	126050	

Cuba [CU]	33384	33384	

German (Dem. Rep.) [DD]	AP84c/137355 WP135b/147203	137355 147203	
AP=Ausschliessungspatent;  WP=Wirtschaftspatent. The other symbols
before the slash are classification symbols.  A single numbering series
covers both AP and WP applications.

Greece [GR]	44114	44114	



  Table II-Countries Using Other Than Application Number
Series-Continued

Country #	Example of application number at source	Minimum significant
part of the number	Remarks

Hungary [HU]	OE 107	OE 107	The letters preceding the number are
essential for identifying the application.  They are the first letter
and the first following vowel of the applicant's name.  There is a
separate numbering sequence for each pair of letters.

Israel [IL]	35691	35691	

Luxembourg [LU]	60093	60093	

Mexico [MX]	123723	123723	

Monaco [MC]	908	908	

New Zealand [NZ]	161732	161732	

OAPI [OA]	52118	52118	

Philippines [PH]	11929	11929	

Poland [PO]	P144826 44987	144826 *449887	

Portugal [PT]	P52-555-5607	52555 *5607	

Romania [RO]	65211	65211	

Soviet Union	1397205-15	1397205	The numbers following the slash denote
the examination division and a processing division.

United States [US]	889877	889877	The highest number assigned in the
series of numbers started in January 1960. New series started in January
1970, January 1979, and January 1987.

 # ICIREPAT Country Code is indicated in brackets, e.g., [AR].

  * In order to distinguish utility model applications from patent
applications, it is necessary to identify them as to type of application
in citations or references.  This may be done by using the name of the
application type in conjunction with the number or by using the symbol
"U" in brackets or other enclosure following the number.

---SECTION---201.15 Right of Priority, Overcoming a Reference

The only times during ex parte prosecution that the examiner considers
the merits of an applicant's claim of priority is when a reference is
found with an effective date between the date of the foreign filing and
the date of filing in the United States and when an interference
situation is under consideration. If at the time of making an action the
examiner has found such an intervening reference, he or she 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 or her reply may argue
the rejection if it is of such a nature that it can be argued, or
present the foreign papers for the purpose of overcoming the date of the
reference. If the applicant argues the reference, the examiner, in the
next action in the application, may specifically require the foreign
papers to be filed in addition to repeating the rejection if it is still
considered applicable, or he or she may merely continue the rejection.

Form Paragraph 2.19 may be used in this instance.

2.19 Overcome Rejection by Translation

Applicant cannot rely upon the foreign priority papers to overcome this
rejection because a translation of said papers has not been made of
record in accordance with 37 CFR 1.55. See MPEP Section  201.15.

Examiner Note:

This paragraph should follow a rejection based on an intervening
reference.

In those cases where the applicant files the foreign papers for the
purpose of overcoming the effective date of a reference, a translation
is required if the foreign papers are not in the English language. When
the examiner requires the filing of the papers, the translation should
also be required at the same time. This translation must be filed
together with a statement that the translation of the certified copy is
accurate. When the necessary papers are filed to overcome the date of
the reference, the examiner's action, if he or she determines that the
applicant is not entitled to the priority date, is to repeat the
rejection on the reference, stating the reasons why the applicant is not
considered entitled to the date.  If it is determined that the applicant
is entitled to the date, the rejection is withdrawn in view of the
priority date.

If the priority papers are already in the file when the examiner finds a
reference with the intervening effective date, the examiner will study
the papers, if they are in the English language, to determine if the
applicant is entitled to their date. If the applicant is found to be
entitled to the date, the reference is simply not used but may be cited
to applicant on form PTO-892. If the applicant is found not entitled to
the date, the unpatentable claims are rejected on the reference with an
explanation. If the papers are not in the English language and there is
no translation, the examiner may reject the unpatentable claims and at
the same time require an English translation for the purpose of
determining the applicant's right to rely on the foreign filing date.

The foreign application may have been filed by and in the name of the
assignee or legal representative or agent of the inventor, as applicant.
In such cases, if the certified copy of the foreign application
corresponds with the one identified in the oath or declaration as
required by 37 CFR 1.63 and no discrepancies appear, it may be assumed
that the inventors are entitled to the claim for priority. If there is
disagreement as to inventors on the certified copy, the priority date
should be refused until the inconsistency or disagreement is resolved.

The most important aspect of the examiner's action pertaining to a right
of priority is the determination of the identity of invention between
the U.S. and the foreign applications. The foreign application may be
considered in the same manner as if it had been filed in this country on
the same date that it was filed in the foreign country, and the
applicant is ordinarily entitled to any claims based on such foreign
application that he or she 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 the United Kingdom there may be submitted a
certified copy of the "provisional specification," which may also in
some cases be accompanied by a copy of the "complete specification." The
nature and function of the United Kingdom provisional specification is
described in an article in the Journal of the Patent Office Society of
November 1936, pages 770-774. According to United Kingdom law the
provisional 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 considering such provisional specifications,
the question of completeness of disclosure is important.  If it is found
that the United Kingdom provisional specification is insufficient for
lack of disclosure, reliance may then be had on the complete
specification and its date, if one has been presented, the complete
specification then being treated as a different application and
disregarded as to the requirement to file within 1 year.

In some instances, the specification and drawing 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 specification and drawing were filed.

It may occasionally happen that the U.S. application will be found
entitled to the filing date of the foreign application with respect to
some claims and not with respect to others. Occasionally a sole or joint
applicant may rely on two or more different foreign applications and may
be entitled to the filing date of one of them with respect to certain
claims and to another with respect to other claims.

---SECTION---201.16 Using Certificate of Correction to Perfect Claim for
Priority Under 35 U.S.C. 119(a)-(d)

35 U.S.C. 119 Benefit of Earlier Filing Date; Right of Priority.

                  +++    

(b)	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 and Trademark Office before the patent is
granted...

                  +++    

The failure to perfect a claim to foreign priority benefit prior to
issuance of the patent may be cured by filing a reissue application.
Brenner v.  State of Israel, 158 USPQ 584 (D.C. Cir. 1968).

However, under certain conditions, this failure may also be cured by
filing a Certificate of Correction request under 35 U.S.C. 255 and 37
CFR 1.323. For example, in the case of In re Van Esdonk, 187 USPQ 671
(Comm'r Pat. 1975), the Commissioner granted a request to issue a
Certificate of Correction in order to perfect a claim to foreign
priority benefits. In that case, a claim to foreign priority benefits
had not been filed in the application prior to issuance of the patent.
However, the application was a continuation of an earlier application in
which the requirements of 35 U.S.C. 119(a)-(d) had been satisfied.
Accordingly, the Commissioner held that the "applicants' perfection of a
priority claim under 35 U.S.C. 119 in the parent application will
satisfy the statute with respect to their continuation application."

Although In re Van Esdonk involved the patent of a continuation
application filed under former 37 CFR 1.60, it is proper to apply the
holding of that case in similar factual circumstances to any patented
application having benefits under 35 U.S.C. 120. This is primarily
because a claim to foreign priority benefits in a continuing
application, where the claim has been perfected in the parent
application, constitutes in essence a mere affirmation of the
applicant's previously expressed desire to receive benefits under 35
U.S.C. 119(a)-(d) for subject matter common to the foreign, parent, and
continuing applications.

In summary, a Certificate of Correction under 35 U.S.C. 255 and 37 CFR
1.323 may be requested and issued in order to perfect a claim for
foreign priority benefit in a patented continuing application if the
requirements of 35 U.S.C. 119(a)-(d) had been satisfied in the parent
application prior to issuance of the patent and the requirements of 37
CFR 1.55(a) are met.

However, a claim to foreign priority benefits cannot be perfected via a
Certificate of Correction if the requirements of 35 U.S.C. 119(a)-(d)
had not been satisfied in the patented application, or its parent, prior
to issuance and the requirements of 37 CFR 1.55(a) are not met. In this
latter circumstance, the claim to foreign priority benefits can be
perfected only by way of a reissue application in accordance with the
rationale set forth in Brenner v.  State of Israel, 158 USPQ 584.

---SECTION---202 Cross-Noting

---SECTION---202.01 In Specification

37 CFR 1.78 Claiming benefit of earlier filing date and cross references
to other applications.

(a)(1) A nonprovisional application may claim an invention disclosed in
one or more prior filed copending nonprovisional applications or
copending international applications designating the United States of
America.  In order for a nonprovisional application to claim the benefit
of a prior filed copending nonprovisional application or copending
international application designating the United States of America, each
prior application must name as an inventor at least one inventor named
in the later filed nonprovisional application and disclose the named
inventor's invention claimed in at least one claim of the later filed
nonprovisional application in the manner provided by the first paragraph
of 35 U.S.C. 112. In addition, each prior application must be:

(i) An international application entitled to a filing date in accordance
with PCT Article 11 and designating the United States of America; or

(ii) Complete as set forth in Section  1.51(b); or

(iii) Entitled to a filing date as set forth in Section  1.53(b) or
Section  1.53(d) and include the basic filing fee set forth in Section 
1.16; or

(iv) Entitled to a filing date as set forth in Section  1.53(b) and have
paid therein the processing and retention fee set forth in Section 
1.21(l) within the time period set forth in Section  1.53(f).

(2) Except for a continued prosecution application filed under Section 
1.53(d), any nonprovisional application claiming the benefit of one or
more prior filed copending nonprovisional applications or international
applications designating the United States of America must contain or be
amended to contain in the first sentence of the specification following
the title a reference to each such prior application, identifying it by
application number (consisting of the series code and serial number) or
international application number and international filing date and
indicating the relationship of the applications. The request for a
continued prosecution application under Section  1.53(d) is the specific
reference required by 35 U.S.C. 120 to the prior application. The
identification of an application by application number under this
section is the specific reference required by 35 U.S.C. 120 to every
application assigned that application number. Cross-references to other
related applications may be made when appropriate (see Section 
1.14(a)).

                  +++    

Where an applicant in an application filed under 37 CFR 1.53(b) seeks to
claim the benefit under 35 U.S.C. 120 or 121 of a continued prosecution
application (CPA) filed under 37 CFR 1.53(d), 37 CFR 1.78(a)(2) requires
a reference to the CPA by application number in the first sentence of
such application. 37 CFR 1.78(a)(2) also provides that "[t]he
identification of an application by application number under this
section is the specific reference required by 35 U.S.C. 120 to every
application assigned that application number." Thus, where a referenced
CPA is in a chain of CPAs, this reference will constitute a reference
under 35 U.S.C. 120 and 37 CFR 1.78(a)(2) to every CPA in the chain as
well as the noncontinued prosecution application originally assigned
such application number. Applicants are not permitted to delete such a
claim for benefit under 35 U.S.C. 120 as to certain applications
assigned that application number (e.g., for patent term purposes).

There is seldom a reason for one application to refer to another
application with no common applicant where the applications are not
assigned to a common assignee. Such reference ordinarily should not be
permitted.

See also 37 CFR 1.79 and MPEP Section  201.11.

---SECTION---202.02 Notation on File Wrapper Regarding Prior U.S.
Applications, Including Provisional Applications

The heading of a printed patent includes all identifying parent data of
continuation-in-part, continuation, divisional, substitute, and reissue
applications, as well as any provisional application from which priority
is claimed. Therefore, the identifying data of all parent or prior
applications, when given in the specification must be inserted by the
examiner in black ink on the file wrapper (for applications with the 09/
series, on the PALM bib-data sheet) in the case of a DIVISION, a
CONTINUATION, a CONTINUATION-IN-PART and, whether given in the
specification or not, in the case of a SUBSTITUTE application.
Similarly, the application number of any provisional application from
which priority is claimed should be printed on the file wrapper or on
the PALM bib-data sheet for 09/ series applications.

The heading of a printed patent issuing on a continued prosecution
application (CPA) filed under 37 CFR 1.53(d) will identify the
application number and filing date of the most recent noncontinued
prosecution application (but not the filing date of the CPA) as well as
all parent application data from which priority was claimed in the most
recent noncontinued prosecution application.

Where parent or prior application data, including provisional
application data, is preprinted on the file wrapper or on the PALM
bib-data sheet for 09/ series applications, the examiner should check
that data for accuracy, including whether the application is, in fact,
copending with the parent application or applications of which priority
is claimed. Where the data is correct, the examiner should initial the
file wrapper or the PALM bib-data sheet for 09/ series applications in
the provided space. Should there be error in the preprinted parent
application data, the application should be forwarded to the Office of
Initial Patent Examination (OIPE) Customer Corrections for correction or
entry of the data in the PALM data base, accompanied by a completed OIPE
Data Base Routing Slip. For 09/ series applications, it will not be
necessary to forward the application to OIPE for correction of the
parent application data in PALM. The correction or entry of the data in
the PALM data base can be made by technical support staff of the
examining group. Upon entry of the data, a new PALM bib-data sheet
should be printed and placed in the file wrapper. Only these terms
should be used to specify the relationship between applications because
of clarity and ease of printing. The status of the parent application,
but not a provisional application, should also be indicated if it has
been patented, abandoned, or published under either the Defensive
Publication Program or the Trial Voluntary Protest Program. Note MPEP
Section  1302.04(f). The "None" boxes must be marked when no parent or
prior application information is present on the file wrappers containing
such boxes. This should be done no later than the first action.

The inclusion of parent or prior application information in the heading
does not necessarily indicate that the claims are entitled to the
benefit of the earlier filing date.

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

In the situation in which 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 application is made on the face of the file
wrapper or on the PALM bib-data sheet for 09/ series applications.

---SECTION---202.03 Notation on File Wrapper When Priority Is Claimed
for Foreign Application

In accordance with MPEP Section  201.14(c), the examiner will fill in
the spaces concerning foreign applications on the face of the older file
wrappers.

The information to be written on the face of the file wrapper consists
of the country, application date (filing date), and if available, the
application and patent numbers. In some instances, the particular nature
of the foreign application such as "utility model" (Germany
(Gebrauchsmuster) and Japan) must be written in parentheses before the
application number. For example: Application Number (utility model)
B62854.

At the present time the computer printed file wrapper labels (for 08/ or
earlier series applications) or PALM bib-data sheet (for 09/ series
applications) include the prior foreign application information. The
examiner should check this information for accuracy. Should there be
error, the examiner should make the appropriate corrections directly on
the file wrapper or on the PALM bib-data sheet in black ink. The
examiner should initial the file wrapper or the PALM bib-data sheet in
the "VERIFIED" space provided when the information is correct or has
been amended to be correct. However, the examiner must still indicate on
the Office action and on the file wrapper or on the PALM bib-data sheet
whether the conditions of 35 U.S.C. 119(a)-(d) have been met.

If the filing dates of several foreign applications are claimed (see
MPEP Section  201.15, last paragraph) and satisfactory papers have been
received for each, information respecting each of the foreign
applications is to be entered on the face of the file wrapper or on the
PALM bib-data sheet.

The front page 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 foreign application in
those applications in which the face of the file or the PALM bib-data
sheet has been endorsed.

---SECTION---202.04 In Oath or Declaration

As will be noted by reference to MPEP Section  201.14, 37 CFR 1.63
requires that the oath or declaration include certain information
concerning applications filed in any foreign country.

---SECTION---202.05 In Case of Reissues

37 CFR 1.179 requires that a notice be placed in the file of an original
patent for which an application for reissue has been filed. See MPEP
Section  1431.

---SECTION---203 Status of Applications

---SECTION---203.01 New

A "new" application is a nonprovisional 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" application.

---SECTION---203.02 Rejected

A nonprovisional application which, during its prosecution in the
examining group 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 reply to the examiner's action (within the allotted reply
period), or until it becomes abandoned.

---SECTION---203.03 Amended

An "amended" or "old" nonprovisional application is one that having been
acted on by the examiner, has in turn been acted on by the applicant in
reply to the examiner's action. The applicant's reply may be confined to
an election, a traverse of the action taken by the examiner or may
include an amendment of the application.

---SECTION---203.04 Allowed or in Issue

An "allowed" nonprovisional application or an application "in issue" is
one which, having been examined, is passed to issue as a patent, subject
to payment of the issue fee. Its status as an "allowed" application
continues from the date of the notice of allowance until it is withdrawn
from issue or until it issues as a patent or becomes abandoned, as
provided in 37 CFR 1.316.

The files of allowed applications are kept in the Publishing Division.

---SECTION---203.05 Abandoned

An abandoned application is, inter alia, one which is removed from the
Office docket of pending applications:

(A) through formal abandonment by the applicant (acquiesced in by the
assignee if there is one) or by the attorney or agent of record;

(B) through failure of applicant to take appropriate action at some
stage in the prosecution of a nonprovisional application;

(C) for failure to pay the issue fee (MPEP Section  203.07, Section  711
to Section  711.05); or

(D) in the case of a provisional application, no later than 12 months
after the filing date of the provisional application (see MPEP Section 
711.03(c) and 35 U.S.C. 111 (b) (5)).

---SECTION---203.06 Incomplete

An application lacking some of the essential parts and not accepted for
filing is termed an incomplete application. (MPEP Section  506, Section 
506.01 and Section  601.01(d)-(g)).

---SECTION---203.07 Abandonment for Failure to Pay Issue Fee

An allowed application in which the Issue Fee is not paid within 3
months after the Notice of Allowance in accordance with 35 U.S.C. 151 is
abandoned for that reason (37 CFR 1.316). The issue fee may, however, be
accepted by the Commissioner if on petition it is shown that the delay
in payment was unavoidable and payment of the fee for delayed payment of
the issue fee under 37 CFR 1.17(l), in which case the patent will issue
as though no abandonment had occurred (MPEP Section  711.03(c)). (37 CFR
1.137(a)). The issue fee may also be accepted if on petition it is shown
that the delay in payment was unintentional and upon payment of the fee
for delayed payment of the issue fee under 37 CFR 1.17(m) (37 CFR
1.137(b)).

---SECTION---203.08 Status Inquiries

NEW APPLICATION

Current examining procedures now provide for the routine mailing from
the examining groups of Form PTOL-37 in every case of allowance of an
application. Thus, the mailing of a form PTOL-37 in addition to a formal
Notice of Allowance (PTOL-85) in all allowed applications would seem to
obviate the need for status inquiries even as a precautionary measure
where the applicant may believe his or her new application may have been
passed to issue on the first examination. However, as an exception, a
status inquiry would be appropriate where a Notice of Allowance is not
received within three months from receipt of form PTOL-37.

Current examining procedures also aim to minimize the spread in dates
among the various examiner dockets of each art unit and group with
respect to actions on new applications. Accordingly, the dates of the
"oldest new applications" appearing in the Official Gazette are fairly
reliable guides as to the expected time frames of when the examiners
reach the applications or action.

Therefore, it should be rarely necessary to query the status of a new
application.

AMENDED APPLICATIONS

Amended applications are expected to be taken up by the examiner and an
action completed within two months of the date the examiner receives the
application. Accordingly, a status inquiry is not in order after reply
by the attorney until 5 or 6 months have elapsed with no response from
the Office. A postcard receipt for replies to Office actions, adequately
and specifically identifying the papers filed, will be considered prima
facie proof of receipt of such papers. Where such proof indicates the
timely filing of a reply, the submission of a copy of the postcard with
a copy of the reply will ordinarily obviate the need for a petition to
revive. Proof of receipt of a timely reply to a final action will
obviate the need for a petition to revive only if the reply was in
compliance with 37 CFR 1.113.

IN GENERAL

Status replies will be made by the Office technical support staff and
will only indicate whether the application is awaiting action by the
examiner or the applicant's reply to an Office action. In the latter
instance the mailing date of the Office action will also be given.

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 Office
of Initial Patent Examination, 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 37
CFR 1.14, he or she should be so informed. For Congressional and other
official inquiries, see MPEP Section  203.08(a).

The original letter of inquiry regarding a pending or abandoned
application should be made of record in the application and assigned a
paper number. The reply to an inquiry which includes a self-addressed,
postage-paid postcard should be made on the postcard without placing it
in an envelope. The file record should also reflect, either on the
original letter or in a separate paper, the nature of the reply to the
inquiry and the date on which the reply was made.

In cases of allowed applications, a memorandum should be attached to the
inquiry with a statement of date it was forwarded to the Publishing
Division. The memorandum and inquiry should then be sent to the
Publishing Division. This Division will notify the inquirer of the date
of the notice of allowance and the status of the application with
respect to payment of the issue fee and abandonment for failure to pay
the issue fee.

In those instances where the letter of inquiry goes beyond mere matters
of inquiry, it should not be marked as a "status letter". Such letters
must be entered in the application file as a permanent part of the
record. The inquiry should be answered by the examiner, however, and in
a manner consistent with the provisions of 37 CFR 1.14.

Another type of inquiry is to be distinguished from ordinary status
letters. When a U.S. application 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
File Information Unit (MPEP Section  102).

Telephone inquiries regarding the status of applications, by persons
entitled to the information, should be directed to the group technical
support personnel and not to the examiners. In as much as the official
records and applications are located in the technical support section of
the examining groups, the technical support personnel can readily
provide status information without contacting the examiners.

---SECTION---203.08(a) Congressional and Other Official Inquiries

Correspondence and inquiries from the White House, Members of Congress,
embassies, and heads of Executive departments and agencies normally are
cleared through the Office of the Administrator for Legislative and
International Affairs.

When persons from the designated official sources request services from
the Office, or information regarding the business of the Office, they
should, under long-standing instructions, be referred, at least
initially, to the Congressional liaison in the Office of Legislative and
International Affairs.

This procedure is used so that there will be uniformity in the handling
of contacts from the indicated sources, and also so that compliance with
directives of the Department of Commerce is attained.

Inquiries referred to in this section, particularly correspondence from
Congress or the White House, should immediately be transmitted to the
Administrator for Legislative and International Affairs by messenger,
and the Congressional liaison in the Office of Legislative and
International Affairs should be notified by phone that such
correspondence has been received.

