Chapter 600 explicitly describes the contents required for filing an application and gaining a filing date. Detailed descriptions and guidelines for the oath/declaration, the disclosure and the drawings are summarized.

Claims are a major part of an application and must be written correctly. This chapter provides a complete outline of the rules involved with writing claims and provides several examples of properly written claims.

An applicant may submit a list of prior art references disclosing subject matter that is similar to the invention they are attempting to patent. This may aid the PTO and the applicant by helping them to shape better claims. The time periods and regulations for submitting an IDS are incredibly complicated and are presented in this chapter as well.

This chapter is tested very heavily. There are always a few questions on the contents of provisional and nonprovisional applications in addition to topics relating to the oath/declaration. Claims are one of the most commonly tested areas of the bar exam. Several years ago, the PTO had a p.m. essay section which focused entirely on claims. As you can probably imagine, the PTO still incorporates many questions related to claims. Some of the claim questions will refer to the wording required to make a proper claim while other questions will be more general. The most difficult questions relate to the logic of a set of claims. Fortunately, there are usually only one of these per every 50 questions. A few additional questions will relate to information disclosure statements (IDS's) and the complex rules associated with their submittal to the PTO.

 

Content of Applications

601 Content of provisional and nonprovisional applications
General application information
The following statute gives a basic overview of the requirements for an application. Remember that specific details concerning provisional and nonprovisional applications may be found in MPEP Summary Chapter 200.

§ 1.51 General requisites of an application.
(a) Applications for patents must be made to the Director of the United States Patent and Trademark Office.
(b) A complete application filed under § 1.53(b) or § 1.53(d) comprises:
(1) A specification as prescribed by 35 U.S.C. 112, including a claim or claims, see §§ 1.71 to 1.77;
(2) An oath or declaration, see §§ 1.63 and 1.68;
(3) Drawings, when necessary, see §§ 1.81 to 1.85; and
(4) The prescribed filing fee, search fee, examination fee, and application size fee, see § 1.16.
(c) A complete provisional application filed under § 1.53(c) comprises:
(1) A cover sheet identifying:
(i) The application as a provisional application,
(ii) The name or names of the inventor or inventors, (see § 1.41(a)(2)),
(iii) The residence of each named inventor,
(iv) The title of the invention,
(v) The name and registration number of the attorney or agent (if applicable),
(vi) The docket number used by the person filing the application to identify the application (if applicable),
(vii) The correspondence address, and
(viii) The name of the U.S. Government agency and Government contract number (if the invention was made by an agency of the U.S. Government or under a contract with an agency of the U.S. Government);
(2) A specification as prescribed by the first paragraph of 35 U.S.C. 112, see § 1.71;
(3) Drawings, when necessary, see §§ 1.81 to 1.85; and
(4) The prescribed filing fee and application size fee, see § 1.16.
(d) Applicants are encouraged to file an information disclosure statement in nonprovisional applications. See § 1.97 and § 1.98. No information disclosure statement may be filed in a provisional application.

Nonprovisional applications:
1. for applications filed on or after December 8, 2004, but prior to July 1, 2005, which have been accorded a filing date, if the search and/or examination fees are paid on a date later than the filing date of the application, the surcharge is not required;
2. for applications filed on or after July 1, 2005, which have been accorded a filing date, if any of the basic filing fee, search fee or examination fee are paid on a date later than the filing date of the application, the surcharge is required

The specific rules relating to an application 's requirements are listed here.

37 C.F.R. 1.53 Application number, filing date, and completion of application.
(a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes.
(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 § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 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 continuationinpart application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and § 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 continuationinpart 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.
(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 § 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 § 1.51(c)(1), which may be an application data sheet (§ 1.76), 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. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this section;
(ii) Payment of the issue fee on the application filed under paragraph (b) of this section;
(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or
(iv) The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by the second paragraph of 35 U.S.C.112. The nonprovisional application resulting from conversion of a provisional application must also include the filing fee for a nonprovisional application, an oath or declaration by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and the surcharge required by § 1.16(e) if either the basic filing fee for a nonprovisional application or the oath or declaration was not present on the filing date accorded the resulting nonprovisional application (i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the provisional application
filed under this paragraph (c).
(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a)(4) may be made in a design application based on a provisional application. No request under § 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/ or amino acid sequences are not mandatory for provisional applications.
(d) Application filing requirements Continued prosecution (nonprovisional) application.
(1) A continuation or divisional application (but not a continuationinpart) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent:
(ii) The prior nonprovisional application is a design application that is complete as defined by § 1.51(b); and
(iii) 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 § 1.313(c) is granted in the prior application;
(B) Abandonment of the prior application
(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 the basic filing fee as set forth in § 1.16(1).
(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 correction of inventorship under § 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 § 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 § 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 "Mail Stop CPA." Requests for an application under this paragraph filed by facsimile transmission should be clearly marked "Mail Stop CPA."
(10) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.
(e) Failure to meet filing date requirements.
(1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to correct the filing error. If, however, a request for an application under paragraph (d) of this section does not meet the requirements of that paragraph because the application in which the request was filed is not a design application, and if the application in which the request was filed was itself filed on or after June 8, 1995, the request for an application under paragraph (d) of this section will be treated as a request for continued examination under § 1.114.
(2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(h). In the absence of a timely (§ 1.181(I)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected.
(3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely (§ 1.181(f)) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n), will be refunded.
(f) Completion of application subsequent to filingnonprovisional (including continued prosecution or reissue) application.
(1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include an oath or declaration by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the filing fee, file an oath or declaration in an application under paragraph (b) of this section, and pay the surcharge required by § 1.16(e) to avoid abandonment.
(2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee or an oath or declaration by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, file an oath or declaration, and pay the surcharge required by § 1.16(e) to avoid abandonment.
(3) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuationinpart applications under paragraph (b) of this section.
(4) See § 1.63(d) concerning the submission of a copy of the oath or declaration from the prior application for a continuation or divisional application under paragraph (b) of this section.
(5) If applicant does not pay one of the basic filing or the processing and retention fees (§ 1.21(1)) during the pendency of the application, the Office may dispose of the application.
(g) Completion of application subsequent to filingprovisional application.
(1) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(k)), and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(1) to avoid abandonment.
(2) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(k)), and applicant has not provided a correspondence address (§ 1.33(a)),
applicant has two months from the filing date of the application within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(1) to avoid abandonment.
(3) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
(h) Subsequent treatment of application Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts, complying with the rules relating thereto, are received, except that certain minor informalities may be waived subject to subsequent correction whenever required.
(i) Subsequent treatment of application Provisional application. A provisional application for a patent filed under paragraph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1).
(j) Filing date of international application. The filing date of an international application designating the United States of America is treated as the filing date in the United States of America under PCT Article 11(3), except as provided in 35 U.S.C. 102(e).

Nonprovisional applications must include:
a specification
claim(s)
an oath or declaration
a cover sheet
drawing(s) (may be a rough drawing)
filing fee

Provisional applications:
The specific rules relating to provisional application requirements are listed here.

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 Director. 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 Director.
(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 Director 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.Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12month period.
(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 Director, 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.

§ 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 § 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 § 1.51(c)(1), which may be an application data sheet (§ 1.76), 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. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this section;
(ii) Payment of the issue fee on the application filed under paragraph (b) of this section;
(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or
(iv) The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by the second paragraph of 35 U.S.C.112. The nonprovisional application resulting from conversion of a provisional application must also include the filing fee for a nonprovisional application, an oath or declaration by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and the surcharge required by § 1.16(e) if either the basic filing fee for a nonprovisional application or the oath or declaration was not present on the filing date accorded the resulting nonprovisional application (i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
(1) Abandonment of the provisional application filed under paragraph (c) of this section; or (ii) Expiration of twelve months after the filing date of the provisional application filed under this paragraph (c).
(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a)(4) may be made in a design application based on a provisional application. No request under § 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
Failure to meet filing date requirements.
(1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a time period within which to correct the filing error.
(2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(h). In the absence of a timely (§ 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected.
(3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely (§ 1.181(f)) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n), will be refunded.
Completion of application subsequent to filing provisional application.
(1) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(k)), and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(1) to avoid abandonment.
(2) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(k)), and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(1) to avoid abandonment.
(3) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
(i) Subsequent treatment of application Provisional application. A provisional application for a patent filed under paragraph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1).

provisional applications must include:
a cover sheet with:
a statement that the application is a provisional application
the name(s) of each inventor the residence of each inventor
the title of the invention
the name and registration number of the attorney or agent (if there is one)
the docket number
a correspondence address
if applicable; the name of the Government agency and contract number
responsible for the application
a specification and any drawings required
the required fee

Filing date:
a provisional application will be given a filing date in accordance with 37 C.F.R. 1.53(c)
the written description and any necessary drawings must be filed to the Office before the application will receive a filing date

amendments (other than those required to make the provisional application comply with applicable regulations) are not permitted after the filing date of the provisional application

At a glance:
The differences between nonprovisional and provisional applications.

Nonprovisional
has at least one claim
is not abandoned after 12 months
requires an oath or declaration

Provisional
does not have any claims
is abandoned after 12 months
no oath or declaration is required

Specific requirements of the application:

§ 1.52 Language, paper, writing, margins, compact disc specifications.
(a) Papers that are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or a reexamination proceeding.
(1) All papers, other than drawings, that are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination proceeding must be on sheets of paper that are the same size, and:
(i) Flexible, strong, smooth, nonshiny, durable, and white;
(ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8 1/2 by 11 inches), with each sheet including a top margin of at least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 inch), and a bottom margin of at least 2.0 cm (3/4 inch);
(iii) Written on only one side in portrait orientation;
(iv) Plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalent; and
(v) Presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photooffset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition.
(2) All papers that are to become a part of the permanent records of the United States Patent and Trademark Office should have no holes in the sheets as submitted.
(3) The provisions of this paragraph and paragraph (b) of this section do not apply to the preprinted information on forms provided by the Office, or to the copy of the patent submitted in double column format as the specification in a reissue application or request for reexamination.
(4) See § 1.58 for chemical and mathematical formulae and tables, and § 1.84 for drawings.
(5) If papers that do not comply with paragraph (a)(1) of this section are submitted as part of the permanent record, other than the drawings, applicant, or the patent owner, or the requester in a reexamination proceeding, will be notified and must provide substitute papers that comply with paragraph (a)(1) of this section within a set time period.
(b) The application (specification, including the claims, drawings, and oath or declaration) or reexamination
proceeding and any amendments or corrections to the application or reexamination proceeding.
(1) The application or proceeding and any amendments or corrections to the application (including any translation submitted pursuant to paragraph (d) of this section) or proceeding, except as provided for in § 1.69 and paragraph (d) of this section, must:
(i) Comply with the requirements of paragraph (a) of this section; and
(ii) Be in the English language or be accompanied by a translation of the application and a translation of any corrections or amendments into the English language together with a statement that the translation is accurate.
(2) The specification (including the abstract and claims) for other than reissue applications and reexamination proceedings, and any amendments for applications (including reissue applications) and reexamination proceedings to the specification, except as provided for in §§ 1.821 through 1.825, must have:
(i) Lines that are 1 1/2 or double spaced;
(ii) Text written in a nonscript type font (e.g., Aria', Times Roman, or Courier) lettering style having capital letters which are at least 0.21 cm (0.08 inch) high; and
(iii) Only a single column of text.
(3) The claim or claims must commence on a separate sheet (§ 1.75(h)).
(4) The abstract must commence on a separate sheet or be submitted as the first page of the patent in a reissue application or reexamination proceeding (§ 1.72(b)).
(5) Other than in a reissue application or reexamination proceeding, the pages of the specification including claims and abstract must be numbered consecutively, starting with 1, the numbers being centrally located above or preferably, below, the text.
(6) Other than in a reissue application or reexamination proceeding, the paragraphs of the specification, other than in the claims or abstract, may be numbered at the time the application is filed, and should be individually and consecutively numbered using Arabic numerals, so as to unambiguously identify each paragraph. The number should consist of at least four numerals enclosed in square brackets, including leading zeros (e.g., [0001]). The numbers and enclosing brackets should appear to the right of the left margin as the first item in each paragraph, before the first word of the paragraph, and should be highlighted in bold. A gap, equivalent to approximately four spaces, should follow the number. Nontext elements (e.g., tables, mathematical or chemical formulae, chemical structures, and sequence data) are considered part of the numbered paragraph around or above the elements, and should not be independently numbered. If a nontext element extends to the left margin, it should not be numbered as a separate and independent paragraph. A list is also treated as part of the paragraph around or above the list, and should not be independently numbered. Paragraph or section headers (titles), whether abutting the left margin or centered on the page, are not considered paragraphs and should not be numbered.
(7) If papers that do not comply with paragraphs (b)(1) through (b)(5) of this section are submitted as part of the application, applicant, or patent owner, or requester in a reexamination proceeding, will be notified and the applicant, patent owner or requester in a reexamination proceeding must provide substitute papers that comply with paragraphs (b)(1) through (b)(5) of this section within a set time period.
(c) (1) Any interlineation, erasure, cancellation or other alteration of the application papers
filed must be made before the signing of any accompanying oath or declaration pursuant to § 1.63 referring to those application papers and should be dated and initialed or signed by the applicant on the same sheet of paper. Application papers containing alterations made after the signing of an oath or declaration referring to those application papers must be supported by a supplemental oath or declaration under § 1.67. In either situation, a substitute specification (§ 1.125) is required if the application papers do not comply with paragraphs (a) and (b) of this section.
(2) After the signing of the oath or declaration referring to the application papers, amendments may only be made in the manner provided by § 1.121.
(3) Notwithstanding the provisions of this paragraph, if an oath or declaration is a copy of the oath or declaration from a prior application, the application for which such copy is submitted may contain alterations that do not introduce matter that would have been new matter in the prior application.
(d) A nonprovisional or provisional application may be in a language other than English.
(1) Nonprovisional application. If a nonprovisional application is filed in a language other than English, an English language translation of the nonEnglish language application, a statement that the translation is accurate, and the processing fee set forth in § 1.17(i) are required. If these items are not filed with the application, applicant will be notified and given a period of time within which they must be filed in order to avoid abandonment.
(2) Provisional application. If a provisional application is filed in a language other than English, an English language translation of the nonEnglish language provisional application will not be required in the provisional application. See § 1.78(a) for the requirements for claiming the benefit of such provisional application in a nonprovisional application.
(e) Electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination proceeding.
(1) The following documents may be submitted to the Office on a compact disc in compliance with this paragraph:
(i) A computer program listing (see § 1.96);
(ii) A "Sequence Listing" (submitted under § 1.821(c)); or
(iii) A table (see § 1.58) that has more than 50 pages of text.
(2) A compact disc as used in this part means a Compact DiscRead Only Memory (CDROM) or a Compact DiscRecordable (CDR) in compliance with this paragraph. A CDROM is a "readonly" medium on which the data is pressed into the disc so that it cannot be changed or erased. A CDR is a "write once" medium on which once the data is recorded, it is permanent and cannot be changed or erased.
(3) (i) Each compact disc must conform to the International Standards
Organization (ISO) 9660 standard, and the contents of each compact disc must be in compliance with the American Standard Code for Information Interchange (ASCII). (ii) Each compact disc must be enclosed in a hard compact disc case within an unsealed padded and protective mailing envelope and accompanied by a transmittal letter on paper in accordance with paragraph (a) of this section. The transmittal letter must list for each compact disc the machine format (e.g., IBMPC, Macintosh), the operating system compatibility (e.g., MSDOS, MSWindows, Macintosh, Unix), a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret the information on the compact disc. Compact discs submitted to the Office will not be returned to the applicant.
(4) Any compact disc must be submitted in duplicate unless it contains only the "Sequence Listing" in computer readable form required by § 1.821(e). The compact disc and duplicate copy must be labeled "Copy 1" and "Copy 2," respectively. The transmittal letter which accompanies the compact disc must include a statement that the two compact discs are identical. In the event that the two compact discs are not identical, the Office will use the compact disc labeled "Copy 1" for further processing. Any amendment to the information on a compact disc must be by way of a replacement compact disc in compliance with this paragraph containing the substitute information, and must be accompanied by a statement that the replacement compact disc contains no new matter. The compact disc and copy must be labeled "COPY I REPLACEMENT MMIDD/YYYY" (with the month, day and year of creation indicated), and "COPY 2 REPLACEMENT MMIDD/YYYY," respectively.
(5) The specification must contain an incorporationbyreference of the material on the compact disc in a separate paragraph (§ 1.77(b)(4)), identifying each compact disc by the names of the files contained on each of the compact discs, their date of creation and their sizes in bytes. The Office may require applicant to amend the specification to include in the paper portion any part of the specification previously submitted on compact disc.
(6) A compact disc must also be labeled with the following information:
(i) The name of each inventor (if known);
(ii) Title of the invention;
(iii) The docket number, or application number if known, used by the person filing the application to identify the application; and
(iv) A creation date of the compact disc.
(v) If multiple compact discs are submitted, the label shall indicate their order (e.g. "1 of X").
(vi) An indication that the disk is "Copy 1" or "Copy 2" of the submission. See paragraph (e)(4) of this section.
(7) If a file is unreadable on both copies of the disc, the unreadable file will be treated as not having been submitted. A file is unreadable if, for example, it is of a format that does not comply with the requirements of paragraph (e)(3) of this section, it is corrupted by a computer virus, or it is written onto a defective compact disc.

Specification:
The specification (or disclosure) is a very important part of every patent application and will be observed throughout this chapter. This section merely identifies and outlines the major parts of the specification that must be sent in with a nonprovisional application.

35 U.S.C. 112 Specification.
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

the specification must comply with the first paragraph of 35 U.S.C. 112 and refer to drawings where it is necessary in order to understand the invention

the specification must consist of the following (with each item in upper case no underlining or
bolding):
the title of the invention (usually 2 to 7 words)
a crossreference to related applications
a statement regarding federally sponsored research or development
a reference to a "Microfiche Appendix"
the background of the invention, including:
the field of the invention
a description of related art with references to specific documents where appropriate
a brief summary of the invention, which:
is directed toward the invention
includes the advantages of the invention or how it solves problems
previously existent in the art
a brief description of the views of the drawing(s)
a detailed description of the invention
should be short and specific
claim(s):
these must commence on a separate sheet
reference characters corresponding to elements recited in the detailed
description and the drawings may be used in conjunction with the recitation of
the same element or group of elements in the claims
reference characters should be enclosed in parenthesis
which are arranged in order of scope so that the first claim presented is
the least restrictive
all dependent claims should be grouped together
claims of like species should be grouped together
product and process claims should be separately grouped
an abstract of the disclosure which must commence on a separate sheet
the drawing(s)
the sequence listing (identify any)

Application requirements:
all sheets should be the same size (8.5 x 11 inches)
margins; top 3/4 inch, left 1 inch, right 3/4 inch, bottom 3/4 inch no holes in the sheets
1.5 or double spaced
the pages should be numbered
in the middle, preferably at the bottom

provisional applications should conform to the basic arrangement guidelines for nonprovisional applications

Notices sent out when an application (any type, provisional or nonprovisional) needs more work:

Notice of Missing Parts:
these are sent out when an application will receive a filing date, but is missing the oath, translation or fee
it commonly occurs when the patent attorney wants to receive an early filing date for the invention, but has not received the oath, translation or fee yet from the inventor
as mentioned, the filing date will not change

Notice of Incomplete Application:
when this is sent out, further action by the applicant is necessary for the application to be accorded a filing date
the application will be processed as an incomplete application under 37 C.F.R. 1.53(e), failure to meet filing date requirements, if the period set in the notice passes and the applicant has either not completed the application or not filed a petition under 37 C.F.R. 1.53(e) with a petition fee

Notice to File Corrected Application Papers:
this is sent out when the specification is noncomplying with 37 C.F.R. 1.52 receiving this will not affect the filing date
however, the applicant must fix the deficiency in the time specified in the notice

Notice of Omitted Items:
this will be sent if an application is missing a critical page; such as in the case of an application with 20 pages that is missing page 17
the filing date can change to the date the missing page is sent in:
the filing date will move forward which can cause a permanent loss of patent rights in some instances
an applicant desiring to submit the omitted page(s) in a nonprovisional application and accept the date of such submission as the application filing date, must, within 2 months from date posted in the notice, file any omitted pages with an oath or declaration in compliance, referring to the pages and a petition under

37 C.F.R. 1.182
an applicant willing to accept the application date as deposited in PTO need not respond (however, the missing page cannot ever be sent in)
the failure to file a petition within 2 months will be treated as a
constructive acceptance of the application as deposited in PTO
an amendment of the specification is required in a nonprovisional application to renumber the pages consecutively and cancel any incomplete sentences caused by the absence of the omitted page(s)
such amendments should be by way of preliminary amendment in order to avoid any delays in the prosecution of the application

other options when dealing with a Notice of Omitted items:
an applicant may just file a new application instead of sending in the missing pages
if the applicant thinks the page was there when the application was mailed, he or she must, within 2 months from the date of Notice, file a petition, with the fee under 37 C.F.R. 1.53(e) along with evidence of the deposit
an applicant may either:
promptly establish prior receipt in the PTO of the page(s) at issue promptly submit the omitted page(s) in a nonprovisional application and accept the date of such submission as the application filing date

a summary of options an applicant has once he or she has received a Notice of Omitted items: file a petition and the fee, together with the omitted items, a copy of the Notice, and a request that the later filing date be awarded
do nothing in response to the Notice of Omitted items; in this instance the original filing date of the incomplete application will be maintained

Oath/Declaration

602 Original oath or declaration
The oath/declaration serves to certify a few facts about the inventorship of the application. The inventors must indicate that they understand the contents of the application and that they must disclose all relevant information in their application.

§ 1.63 Oath or declaration.
(a) An oath or declaration filed under § 1.51(b)(2) as a part of a nonprovisional application must:
(1) Be executed, i.e., signed, in accordance with either § 1.66 or § 1.68. There is no minimum age for a person to be qualified to sign, but the person must be competent to sign, i.e., understand the document that the person is signing;
(2) Identify each inventor by full name, including the family name, and at least one given name without abbreviation together with any other given name or initial;
(3) Identify the country of citizenship of each inventor; and
(4) State that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.
(b) In addition to meeting the requirements of paragraph (a) of this section, the oath or declaration must also:
(1) Identify the application to which it is directed;
(2) State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims, as amended by any amendment specifically referred to in the oath or declaration; and
(3) State that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.
(c) Unless such information is supplied on an application data sheet in accordance with § 1.76, the oath or declaration must also identify:
(1) The mailing address, and the residence if an inventor lives at a location which is different from where the inventor customarily receives mail, of each inventor; and
(2) Any foreign application for patent (or inventor's certificate) for which a claim for priority is made pursuant to § 1.55, and any foreign application 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.
(d) (1) A newly executed oath or declaration is not required under § 1.51(b)(2) and § 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 § 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 § 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 § 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.
(e) A newly executed oath or declaration must be filed in any continuationinpart application, which application may name all, more, or fewer than all of the inventors named in the prior application.

the Office strongly encourages the use of declarations rather than oaths
documents with seals cannot be adequately scanned

the oath or declaration does not need to state whether the inventor is the sole or joint inventor of the claimed invention

an oath or declaration must:
identify the specification
identify each inventor and their residence
state that each person has reviewed and understands the contents of the specification and claims
state that the inventors are accurate
acknowledge the duty to disclose all the information known to be material to the patentability of the subject matter to the Office
an oath cannot be changed in any manner after it is signed and sent in to the Office
however, the applicant may send in a completely new oath

declaration:
the applicant's mailing address need not be identified in the declaration if the address is included in the application data sheet
any foreign priority information must be included in the declaration if it is not included in the application data sheet
an applicant's citizenship must be included in the declaration regardless of whether it is in the application data sheet if the "applicant" is construed as a person or party other than the inventor

the difference between an oath and a declaration:
an oath is sworn to be true before a notary or its equivalent
a declaration is a statement with a warning indicating that willfully false statements are punishable by law

an oath or declaration must certify that:
the inventors believe they are the first inventors of the subject matter
the inventors understand the contents of the application
the inventors know they have a duty to disclose all information known to them that is relevant to the patentability of the subject matter

a brand new oath is not required for a continuation filing under 37 C.F.R. 1.53(b), a provisional and 37 C.F.R.1.53(d), a continued prosecution application
if the examiner determines that a continuation or divisional application contains new matter relative to the prior application, the examiner should notify applicant in the next Office action and require applicant to submit a new oath or declaration along with the surcharge and to redesignate the application as a continuationinpart

not just anyone can alter an application after the declaration or oath has been executed:
prior to execution, an inventor can alter the application by hand if all changes are initialed by all inventors
a patent attorney or agent cannot sign an oath, even if a previously signed oath was obtained the same day

if a legal representative executes an oath or declaration on behalf of a deceased inventor, the legal representative must state that the person is a legal representative and provide the citizenship, residence, and mailing address of the legal representative

the order of the names on an oath/declaration is not of legal consequence, but it is the order that the inventors will be listed on the patent once it is allowed

an oath or declaration does not need to be in English

603 Supplemental oath or declaration

§ 1.67 Supplemental oath or declaration.
(a) The Office may require, or inventors and applicants may submit, a supplemental oath or declaration meeting the requirements of § 1.63 or § 1.162 to correct any deficiencies or inaccuracies present in the earlier filed oath or declaration.
1) Deficiencies or inaccuracies relating to all the inventors or applicants (§§ 1.42, 1.43, or § 1.47) may be corrected with a supplemental oath or declaration signed by all the inventors or applicants.
(2) Deficiencies or inaccuracies relating to fewer than all of the inventor(s) or applicant(s) §§ 1.42, 1.43 or § 1.47) may be corrected with a supplemental oath or declaration identifying the entire inventive entity but signed only by the inventor(s) or applicant(s) to whom the error or deficiency relates.
(3) Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(c) (e.g., to correct the omission of a mailing address of an inventor) in an oath or declaration may be corrected with an application data sheet in accordance with § 1.76.
(4) Submission of a supplemental oath or declaration or an application data sheet (§ 1.76), as opposed to who must sign the supplemental oath or declaration or an application data sheet, is governed by § 1.33(a)(2) and paragraph (b) of this section.
(b) A supplemental oath or declaration meeting the requirements of § 1.63 must be filed when a claim is presented for matter originally shown or described but not substantially embraced in the statement of invention or claims originally presented or when an oath or declaration submitted in accordance with § 1.53(f) after the filing of the specification and any required drawings specifically and improperly refers to an amendment which includes new matter. No new matter may be introduced into a nonprovisional application after its filing date even if a supplemental oath or declaration is filed. In proper situations, the oath or declaration here required may be made on information and belief by an applicant other than the inventor.
(c) [Reserved]

a supplemental oath or declaration is submitted in order to replace an original oath or declaration that is defective

filing a supplemental oath or declaration is a matter of right, therefore, it can be filed after the application is allowed

a deficiency or inaccuracy relating to the information required by 37 C.F.R. 1.63 may be corrected with an application data sheet
the original disclosure cannot be altered by merely the filing of a subsequent oath or declaration which refers to different papers

when an inventor who executed the original declaration will not execute a required supplemental declaration, it is possible for that particular requirement to be suspended or waived in accordance with 37 C.F.R. 1.183

Applicant

605 Applicant
Since amendments are not permitted after the payment of the issue fee, a petition under 37 C.F.R. 1.182 to change the name of the inventor cannot be granted if filed after the payment of the issue fee. In these situations, the applicant may either:
withdraw the application from issue and file an RCE with a request to correct the spelling of the inventor's name, or
file a certificate of correction after the patent issues requesting correction for the spelling of the inventor's name

applications filed through the electronic filing system (EFS) must also contain an oath or a declaration personally signed by the inventor

an applicant may sign his or her name using nonEnglish characters

in order to qualify as an inventor, the named inventor(s) must have actually contributed to the claim(s)
an inventor is not just someone who works at the location where the invention of the subject matter occurred

Joint inventors:
if an application by joint inventors includes more than 1 independent and distinct invention, a restriction may be required
if this occurs, the inventorship named in the application may need to be changed due to the fact that the presently elected invention was not the invention of all the original named inventors

inventors can apply for a patent jointly even if:
they did not physically work together on the invention
they did not work on the invention at the same time
they made unequal contributions
they each made different claims (so long as they pertain to the same invention)

if necessary, applicants should use an application data sheet (ADS) to provide a corrected spelling of their name or to reverse the order of inventor names when the patent issues

Filing Fee

607 Filing fee
The Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act), effective December 8, 2004, provides for a separate filing fee, search fee, and examination fee during fiscal years 2005 and 2006.

For nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 8, 2004 (including reissue applications), the following fees are required:
basic filing fee
search fee
examination fee
application size fee (if applicable), and
excess claims fees (if applicable)

The basic filing, search and examination fees are due on the filing of the nonprovisional application.
These fees may be paid on a date later than the filing date of the application provided they are paid within the time period set forth in 37 CFR 1.53(f) and include the surcharge.

For applications filed on or after December 8, 2004 but prior to July 1, 2005, if the search and/or examination fees are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is not required.

For applications filed on or after July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(b) or (d), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required.

For nonprovisional applications filed under 35 U.S.C. 111(a) before December 8, 2004 (including reissue applications), the following fees are required:
basic filing fee; and
excess claims fees, if applicable.

No search and examination fees are required for nonprovisional applications filed under 35 U.S.C. 111(a) before December 8, 2004.

For provisional applications filed under 35 U.S.C. 111(b), the basic filing fee is required.

The basic filing fee is due on filing of the provisional application, but may be paid later, if paid within the time period set forth in 37 CFR 1.53(g) and accompanied by payment of a surcharge.

The filing fee for a nonprovisional application is calculated by the total number of claims. The basic fee is limited to 3 independent claims and a total of 20 claims. Any more than that and the basic filing fee increases.

a preliminary amendment that cancels or adds claims and was filed concurrently with a response to a Notice to File Missing Parts that required the filing fee may be taken into account in determining the appropriate filing fees due in response to the Notice

Refunds:

§ 1.26 Refunds.
(a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. The Office will not refund amounts of twentyfive dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
(b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph or in § 1.28(a). If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 1.25(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
(c) if the Director decides not to institute a reexamination proceeding, for ex parte reexaminations filed under § 1.510, a refund of $1,690 will be made to the reexamination requester. For inter partes reexaminations filed under § 1.913, a refund of $7,970 will be made to the reexamination requester. The reexamination requester should indicate the form in which any refund should be made (e.g., by check, electronic funds transfer, credit to a deposit account, etc.). Generally, reexamination refunds will be issued in the form that the original payment was provided.
it is possible for an applicant to receive a refund if he or she has a valid reason to do so, however, an applicant who withdraws an application will never receive a refund

amendments affecting the claims cannot serve as the basis for granting any refund

if a practitioner "by mistake" files an application and a basic filing fee, the submission of the filing fee with the application is not treated by the Office as a fee paid by mistake and the fee will not be refunded

any desperate request by an applicant to not process or charge an application filing fee because the application was not intended to be filed must be in the form of a petition under 37 C.F.R. 1.183 with the required fee
for this to be considered, the petition usually has to be filed and acted upon prior to the date on which the application filing fee is processed or charged by the Office with regard to the application

Disclosure

608 Disclosure
The specification or disclosure is a written description of the invention that describes the manner and process of making and using the invention. A specification must be in full, clear, concise and exact terms and enable any person skilled in the art or science to which the invention pertains to make and use it.

Specification

§ 1.71 Detailed description and specification of the invention.
(a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.
(b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.
(c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.
(d) A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For notices in drawings, see § 1.84(s). The content of the notice must be limited to only those elements provided for by law. For example, "©1983 John Doe"(17 U.S.C. 401) and "*M* John Doe" (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in paragraph (e) of this section is included at the beginning (preferably as the first paragraph) of the specification.
(e) The authorization shall read as follows:
A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all (copyright or mask work) rights whatsoever.
(f) The specification must commence on a separate sheet. Each sheet including part of the specification may not include other parts of the application or other information. The claim(s), abstract and sequence listing (if any) should not be included on a sheet including any other part of the application.
(g) (1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement (35 U.S.C. 103(c)(2)(C)).
(2) An amendment under paragraph (g)(1) of this section must be accompanied by the
processing fee set forth § 1.17(i) if not filed within one of the following time periods:
(i) Within three months of the filing date of a national application; § 1.72
(ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
(iii) Before the mailing of a first Office action on the merits; or
(iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.
(3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.

What is the specification?
it is a written description of the invention and how to make and use it
it must be in full, clear, concise and exact terms
it distinguishes it from other, older inventions
it points out any improvements in the subject matter

Rules for the specification:
the specification may have tables and chemical formulas within it in lieu of formal
drawings;
if the specification includes a sequence listing or a table, such a sequence listing or table is not permitted to be reprinted in the drawings.

Title and abstract:
150 words (maximum) abstract should not exceed 15 lines of text.

Detailed description of invention:
tables may be included in the description portion of the specification, however, the same tables must not be included in both the drawings and the description portion of the specification.

Drawings:
1. each drawing sheet submitted after the filing date of an application must be identified as either a "Replacement Sheet" or a "New Sheet".

Definitions:
the definition on interference prints was removed.

Tables
a table in landscape format should be identified as such in the transmittal letter, otherwise the table will be rendered as a portrait by the PTO;
CDR discs must be finalized so they are closed to further writing on the CDR.

NonEnglish specifications:
the specification may be filed in a language other than English, however, it will eventually need to be translated

translations must:
include a signed statement that the translation is accurate only be done in emergency situations
be filed within a specified time period
be accompanied by a fee

Application order:

§ 1.77 Arrangement of application elements.
(a) The elements of the application, if applicable, should appear in the following order:
(1) Utility application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings.
(6) Executed oath or declaration.
(b) The specification should include the following sections in order:
(1) Title of the invention, which may be accompanied by an introductory portion stating the name,
citizenship, and residence of the applicant (unless included in the application data sheet).
(2) Crossreference to related applications (unless included in the application data sheet).
(3) Statement regarding federally sponsored research or development.
(4) Reference to a "Sequence Listing," a table, or a computer program listing appendix submitted on
a compact disc and an incorporationbyreference of the material on the compact disc (see §
1.52(e)(5)). The total number of compact discs including duplicates and the files on each compact
disc shall be specified.
(5) Background of the invention.
(6) Brief summary of the invention.
(7) Brief description of the several views of the drawing.
(8) Detailed description of the invention.
(9) A claim or claims.
(10) Abstract of the disclosure.
(11) "Sequence Listing," if on paper (see §§ 1.821 through 1.825).
(c) The text of the specification sections defined in paragraphs (b)(1) through (b)(11) of this section, if
applicable, should be preceded by a section heading in uppercase and without underlining or bold type.

the order should always be what is listed above:
however, in the case of provisional applications, the claims and any other nonapplicable material may be skipped; note that the general order should be the same
the applicant only needs to write "not applicable" where a section does not apply

if a table having more than 50 pages of text is submitted on CD, the specification of a patent application must contain an incorporationbyreference of the material on the CD in a separate paragraph, identifying each CD by the names of the files contained on each CD, their date of creation, and their size in bytes

Application data sheet:

§ 1.76 Application data sheet.
(a) Application data sheet. An application data sheet is a sheet or sheets that may be voluntarily submitted in either provisional or nonprovisional applications, which contains bibliographic data, arranged in a format specified by the Office. If an application data sheet is provided, the application data sheet is part of the provisional or nonprovisional application for which it has been submitted.
(b) Bibliographic data. Bibliographic data as used in paragraph (a) of this section includes:
(1) Applicant information. This information includes the name, residence, mailing address, and citizenship of each applicant (§ 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with any other given name or initial. If the applicant is not an inventor, this information also includes the applicant' s authority (§§ 1.42, 1.43, and 1.47) to apply for the patent on behalf of the inventor.
(2) Correspondence information. This information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (see § 1.33(a)).
(3) Application information. This information includes the title of the invention, a suggested classification, by class and subclass, the Technology Center to which the subject matter of the invention is assigned, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, the type of application (e.g., utility, plant, design, reissue, provisional), whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to § 5.2 of this chapter (see § 5.2(c)), and, for plant applications, the Latin name of the genus and species of the plant claimed, as well as the variety denomination. The suggested classification and Technology Center information should be supplied for provisional applications whether or not claims are present. If claims are not present in a provisional application, the suggested classification and Technology Center should be based upon the disclosure.
(4) Representative information. This information includes the registration number of each practitioner having a power of attorney or authorization of agent in the application (preferably by reference to a customer number). Providing this information in the application data sheet does not constitute a power of attorney or authorization of agent in the application (see § 1.34(b)).
(5) Domestic priority information. This information includes the application number, the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and § 1.78(a)(2) or § 1.78(a)(4), and need not otherwise be made part of the specification.
(6) Foreign priority information. This information includes the application number, country, and filing date of each foreign application for which priority is claimed, as well as any foreign application having a filing date before that of the application for which priority is claimed. Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55(a).
(7) Assignee information. This information includes the name (either person or juristic entity) and address of the assignee of the entire right, title, and interest in an application. Providing this information in the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
(c) Supplemental application data sheets. Supplemental application data sheets:
(1) May be subsequently supplied prior to payment of the issue fee either to correct or update information in a previously submitted application data sheet, or an oath or declaration under § 1.63 or § 1.67, except that inventorship changes are governed by § 1.48, correspondence changes are governed by § 1.33(a), and citizenship changes are governed by § 1.63 or § 1.67; and
(2) Should identify the information that is being changed (added, deleted, or modified) and therefore need not contain all the previously submitted information that has not changed.
(d) Inconsistencies between application data sheet and oath or declaration. For inconsistencies between
information that is supplied by both an application data sheet under this section and by an oath or
declaration under § 1.63 and § 1.67:
(1) The latest submitted information will govern notwithstanding whether supplied by an application data sheet, or by a § 1.63 or § 1.67 oath or declaration, except as provided by paragraph (d)(3) of this section;
(2) The information in the application data sheet will govern when the inconsistent information is supplied at the same time by a § 1.63 or § 1.67 oath or declaration, except as provided by paragraph (d)(3) of this section;
(3) The oath or declaration under § 1.63 or § 1.67 governs inconsistencies with the application data sheet in the naming of inventors (§ 1.41(a)(1)) and setting forth their citizenship (35 U.S.C. 115);
(4) The Office will initially capture bibliographic information from the application data sheet (notwithstanding whether an oath or declaration governs the information). Thus, the Office shall generally not look to an oath or declaration under § 1.63 to see if the bibliographic information contained therein is consistent with the bibliographic information captured from an application data sheet (whether the oath or declaration is submitted prior to or subsequent to the application data sheet). Captured bibliographic information derived from an application data sheet containing errors may be recaptured by a request therefore and the submission of a supplemental application data sheet, an oath or declaration under § 1.63 or § 1.67, or a letter pursuant to § 1.33(b).

the Office strongly encourages the filing of an ADS or a supplemental ADS to correct a typographical error in the spelling of an inventor's name

if an application data sheet under 37 C.F.R. 1.76 is used, data supplied in the application data sheet need not be provided elsewhere in the application
one exception is that the citizenship of each inventor must be provided in the oath or declaration under 37 C.F.R. 1.63, even if this information is provided in the application data sheet

Title and abstract:

§ 1.72 Title and abstract.
(a) The title of the invention may not exceed 500 characters in length and must be as short and specific as possible. Characters that cannot be captured and recorded in the Office's automated information systems may not be reflected in the Office's records in such systems or in documents created by the Office. Unless the title is supplied in an application data sheet (§ 1.76), the title of the invention should appear as a heading on the first page of the specification.
(b) A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, under the heading "Abstract" or "Abstract of the Disclosure." The abstract in an application filed under 35 U.S.C. 111 may not exceed 150 words in length. The purpose of the abstract is to enable the United States Patent and Trademark Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure. The abstract will not be used for interpreting the scope of the claims.

the title and abstract:
should be provided so a reader can quickly determine what was invented should be a clear, concise statement of the technical disclosure of the patent and should include the subject matter that is new to the invention
should mention modifications or alternatives incorporated into the invention that make it an improvement over the previous art
must commence on a separate sheet
should include the following:
if a machine or an apparatus; its organization and operation
if an article; its method of making
if a chemical compound; its identity and use
if a mixture; its ingredients
if a process; the steps to follow
should only be a summary, no details are necessary
should be a mixture of background art and the new invention
should include the general nature of the compounds or if applicable, a composition
should be a single paragraph
150 words (maximum)
may not contain implied phrases such as "the disclosure concerns"

material disclosed in the abstract may be amended into the specification without violating the forbidden new matter rule

Brief summary of the invention:

§ 1.73 Summary of the invention.
A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed description. Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.

the summary of the invention:
must include the subject matter of the invention
should be summarized in one or more clear, concise sentences or paragraphs oBrief description of the drawings:

§ 1.74 Reference to drawings.
When there are drawings, there shall be a brief description of the several views of the drawings and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures and to the different parts by use of reference letters or numerals (preferably the latter).

if a figure contains several parts, as for example, figures 1 A, 1 B, and 1 C, the figure may be described as figure 1
if only figure 1 A is described in the brief description, the examiner should object to the brief description, and require the applicant to either add a brief description of figures 1B and 1 C or describe the figure as "figure 1"

Detailed description of invention:
any person skilled in the art or science should be able to make and use the invention from reading the detailed description of the invention, without doing extensive experimentation

Claims:

The claims are one of the most important sections of a patent. They should specifically point out what the invention "claims" to do. Claims outline the protection afforded by the patent. In the event that an infringement case is initiated, the courts scrutinize the claims in order to establish whether the rights of the patent owners were actually infringed upon. Claims are the definition of that for which prosecution is granted.

§ 1.75 Claim(s).
(a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.
(b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.
(c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim ("multiple dependent claim") shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes, also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(d). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.
(d) (1) The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. (See § 1.58(a)).
(2) See §§ 1.141 to 1.146 as to claiming different inventions in one application.
(e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:
(1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
(2) A phrase such as "wherein the improvement comprises," and
(3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
(f) If there are several claims, they shall be numbered consecutively in Arabic numerals.
(g) The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.
(h) The claim or claims must commence on a separate sheet.
(i) Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.

if the examiner determines that the claims presented late in the prosecution do not comply with the requirements in 1.75(d)(1), the applicant will be required to make appropriate amendments to the description to provide clear support for the terms appearing in the claims, provided no new matter is introduced

rules concerning claims:
they should be placed at the end of the specification
if there is more than one claim, they should be separated by a line of indentation
claims should preferably be arranged in order of scope so that the first claim is the least restrictive (the broadest)
claims of like species should be grouped together
process and product claims need to be separately grouped
any measurements that may be included within the claims should all be in the metric system, followed by English units
claims may contain tables only if they are necessary to conform to 35 U.S.C. 112 (Specification guidelines)

grammatical rules for claims:
they should begin with "I (or we) claim", or "The invention claimed is"
a claim is divided by a colon (:) which generally describes the things or steps involved
either a semicolon or comma separates each paragraph
the last step should have an "and" after the semicolon (; and) each claim should begin with a capital and end with a period
only the first word in a claim is capitalized

duplicate claims:
an applicant has the right to restate the invention in a reasonable number of ways
however, there can never be two claims covering the same subject matter

amendments to claims:
five words can be added to nonreissue applications by simple direction
newly added claims should not contain underlined words

preamble:
the preamble of a claim contains a description of things or steps and a body that sets forth the elements or steps and limitations of the claims

Dependent claims:
A series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim.

rules concerning dependent claims:
a dependent claim must further limit the subject matter of a previous claim
the USPTO does not require or recommend a minimum or maximum number of dependent claims
a claim depending from a dependent claim should not be separated from any claim which does not also depend (directly or indirectly) from the "dependent claim"
a singular dependent claim 2 could read:
2. The product of claim 1 in which...

an application may contain a series of singular dependent claims where a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim (a string of claims)

Broadening claims:
Since independent claims are the broadest claims of an application and dependent claims depend on independent claims, broadening of a dependent claim may not broaden the scope of the invention.

in a reexamination:
if the independent claims of a patent are not broadened, then amendments to the dependent claims may not broaden the scope of the invention covered by the claims

continuing applications:
may be filed before the application pendency terminates
also, since narrower claims may be patentable, these narrower claims are not necessarily barred even though the broader claims are determined to be unpatentable
a continuing application may be filed that contains narrower claims than the original application

Productby process claims:
A claim to a device, apparatus, machine or composition of matter may contain a reference to the process in which it is intended to be used, so long as it is clear that the claim is directed to the product and not the process, only referenced to it.

productbyprocess claims should be separately grouped

a lesser burden of proof may be required to make out a case of prima facie obviousness for productbyprocess claims than is required to make out a prima facie case of obviousness when the product is claimed in the conventional fashion

the fact that it is necessary for an applicant to describe his or her product in productbyprocess terms does not prevent him or her from presenting claims of varying scope

the determination of patentability is based upon the product itself:
the patentability of a product does not depend on its method of production if the product in a productbyprocess claim is the same as or obvious to prior art
the claim is unpatentable even though the prior art is made from a different process

Multiple dependent claims:
Multiple dependent claims are a series of dependent claims that refer back in the alternative form to more than one preceding independent or dependent claim.

35 U.S.C. 112 authorizes multiple dependent claims as long as they are in the alternative form, they can never be cumulative (which means they cannot use the term "and")

the wording of multiple dependent claims must:
be in the alternative form "or" never contain the cumulative "and"

rules of multiple dependent claims:
they may only refer to one set of claims
they cannot depend on another multiple dependent claim
they cannot depend on more than one previous claim
they may not serve as a basis for any other multiple dependent claim, either directly or indirectly
they may not contain all the limitations of all the alternative claims to which it refers
the limitations or elements of each claim that is incorporated by reference into a multiple dependent claim must be considered separately
they must be considered in the same manner as a plurality of single dependent claims
restriction may be required between the embodiments of a multiple dependent claim
they may contain in any one embodiment only those limitations of the particular claim referred to for the embodiment under consideration

if added by amendment to a pending patent application, the multiple dependent claim should not be entered until the proper fee is received by the PTO

Examples of good multiple dependent claims:
a widget according to claims 2 or 3, further comprising...
a widget as in any one of the preceding claims, in which... a widget as in either claim 2 or claim 3, further comprising...
a gadget as in claim 2 or 3, further comprising...
a gadget as in claims 2, 3, 8, or 9, further comprising...
a gadget as in any of the preceding claims, in which...
a gadget as in one of claims 28, in which...
a gadget as in any preceding claim, in which...
a gadget as in any of claims 13 or 810, in which...
a gadget as in any one of claims 1,2, or 810 inclusive, in which..

Examples of bad multiple dependent claims:
using "and" instead of the alternative "or" is incorrect as shown in the following:
a gadget according to claim 3 and 4, further comprising...
a gadget as in the preceding claims in which...
a gadget as in claims 13 or 710, in which...
a gadget according to claims 13, in which...

cannot have a new claim which makes no reference to a preceding claim: a gadget as in any of the following claims, in which... a gadget as in either claim 2 or claim 3, in which

cannot make reference to more than one set of claims:
a gadget as in claim 2 or 3 made by the process of claims 4, 5, 6, or 7, in which...

cannot refer to another multiple dependent claim:
a gadget as in claim 3 (which is a multiple dependent claim) or claim 4, in which...

cannot say "apparatus as in the preceding claims"

Fee calculations:
fees for multiple dependent claims:
a multiple dependent claim is considered to be the number of dependent claims to which it refers
each proper multiple dependent claim counts as the number of claims on which it depends for calculating the fees
for fee calculation purposes, claims in proper multiple dependent form may not be considered single dependent claims

Example 1:
Claim no.                                   Ind.      Dep.
1. Independent                            1
2. Dependent on claim 1                          1
3. Dependent on claim 2                          1
4. Dependent on claim 2 or 3                   2
5. Dependent on claim 4                          2
6. Dependent on claim 5                          2
7. Dependent on claim 4, 5, or 6              1bad (depends on multiple claim)
8. Dependent on claim 7                          1bad (depends on improper claim)
9. Independent                            1
10. Dependent on claim 1 or 9                 2
11. Dependent on claims 1 and 9             1bad (uses "and" instead of "or")
Total                                           2         13

a dependent claim must further limit the subject matter of the previous claim
a dependent claim must refer back in the alternative only

Example 2:
Claim 1 independent
Claim 2 dependent from 1
Claim 3 dependent from 2
Claim 4 dependent from 2 or 3
Claim 5 dependent from 3
Claim 6 dependent from 2, 3 or 5

there are a total of 8 dependent claims for fee calculation purposes in example 2
if none of the multiple dependent claims are proper, the multiple dependent claim fee set forth in 37 C.F.R. 1.16(d) will not be required
however, if at least one multiple dependent claim is proper, the multiple dependent claim fee is required

Claim numbering:

§ 1.126 Numbering of claims.
The original numbering of the claims must be preserved throughout the prosecution. When claims are canceled the remaining claims must not be renumbered. When claims are added, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not). When the application is ready for allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by applicant.

Infringement test:
a proper dependent claim may not be conceivably infringed upon by anything which would not also infringe the basic claim
a dependent claim should include every limitation of the claim from which it depends

the infringement qualities of claims can be attributed to specific wording; some common examples include:
comprising:
the list of elements and limitations that follow the word "comprising" defines the minimum characteristics for infringement, there still can be infringement if an alleged infringing thing or method has more protected characteristics is still possible
consisting:
the list that follows the word "consisting" defines the exact combination of elements that must be present in order for another product to be infringing
there is no infringement if more elements are present

Markush claims: A Markush group is used to define a claim limitation where there is no generic term to describe a group of things.

Markush group:
it is an acceptable form of alternative expression, provided the introductory phrase "consisting of' and the conjunctive "and" is used
no "or"
for example; R is selected from the group consisting of A, B, C and D

two phrases that often define a Markush group are: "chosen from the group consisting of'
"chosen from the group consisting essentially of'

Jepson claims:
A Jepson claim has a preamble (introduction) that defines what is old, a body defining what is new and a transitional phrase such as "the improvement comprising of'.

Scope of claims:
the following portions of a patent application can be used for interpreting the scope of the claims in an application:
a description of the preferred embodiment
a background of the invention
the drawings
a detailed description of the drawings

the difference between a method and an apparatus:
an apparatus claims a combination of elements a method claim covers a combination of steps

Drawings:

Most inventions require a drawing along with the application in order to help understand the invention. The lack of a drawing will render an application incomplete. In those instances, the applicant will not be given a filing date until the drawing is received.

35 U.S.C. 113 Drawings.
The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may require its submission within a time period of not less than two months from the sending of a notice thereof. Drawings submitted after the filing date of the application may not be used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or (ii) to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.

§ 1.81 Drawings required in patent application.
(a) The applicant for a patent is required to furnish a drawing of his or her invention where necessary for the understanding of the subject matter sought to be patented; this drawing, or a high quality copy thereof, must be filed with the application. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction.
(b) Drawings may include illustrations which facilitate an understanding of the invention (for example, flowsheets in cases of processes, and diagrammatic views).
(c) Whenever the nature of the subject matter sought to be patented admits of illustration by a drawing therewith.
(d) Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. Such corrections are subject to the requirements of § 1.81(d).

facsimile copies of drawings are acceptable if included with application papers that are mailed or hand delivered to the Office, or submitted at the time of payment of the issue fee
applicant's should ensure that the facsimile transmission process does not unreasonably
degrade the quality of the drawings

drawing corrections or changes will be entered at the time they are presented, unless applicant is notified to the contrary by the examiner in the action following the amended drawing submission
if a drawing figure is canceled, a replacement sheet of drawing must be submitted with the figure
if the canceled figure was the only drawing on the sheet, then only a markedup copy of the drawing including an annotation that the drawing has been canceled is required

the following types of inventions do not require drawings in order to understand the invention:
coated articles or products
articles made from a particular material or composition
laminated structures
articles, apparatus, or systems where the sole distinguishing feature is the presence of a particular material

color photographs and color drawings will be accepted for filing if:
accompanied by the required fees
three sets of each are filed

Definitions:
original drawings:
a drawing submitted with the application when filed
it does not matter whether or not it is acceptable or unacceptable

substitute drawing:
a drawing filed later than the filing date of an application
it is usually submitted in order to replace an original informal drawing

drawing print:
a term used for the white paper print prepared by the Office for all original drawings

interference print:
a copy prepared of the original drawings filed in file cabinets separate from the file wrappers; these are used to make interference searches

plan:
illustrates the top view

elevation:
illustrates the views showing the heights of the objects

Filing date particulars:
if a drawing is not necessary for the understanding of the invention, but the case admits of illustration, the examiner may require the drawing, but a lack of one in the application when filed will not affect the filing date of the application

if a drawing is necessary for the understanding of an invention, but it is not submitted when the application is filed, the application cannot be given a filing date until the drawing is received by the PTO

a drawing is not required to receive a filing date under 35 U.S.C. 111 and 35 U.S.C.113 if the application contains at least one:
process claim that includes the term "process" or "method" in its introductory phrase
composition claim that includes the term "composition", "compound", "mixture" or "pharmaceutical" in its introductory phrase
claim directed to a coated article or product or to an article or product made from a particular material or compound (i.e., an article of known and conventional characteristics coated with or made of a particular compound) claim directed to a laminated article or product
claim directed to an article, apparatus or system where the sole distinguishing feature is the presence of a particular material (e.g., a hydraulic system using a particular hydraulic fluid)

Drawing Standards:

§ 1.84 Standards for drawings.
(a) Drawings. There are two acceptable categories for presenting drawings in utility and design patent applications.
(1) Black ink. Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings; or
(2) Color. On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility or design patent application or the subject matter of a statutory invention registration. The color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent. Color drawings are not permitted in international applications (see PCT Rule 11.13), or in an application, or copy thereof, submitted under the Office electronic filing system. The Office will accept color drawings in utility or design patent applications and statutory invention registrations only after granting a petition filed under this paragraph explaining why the color drawings are necessary. Any such petition must include the following:
(i) The fee set forth in § 1.17(h);
(ii) Three (3) sets of color drawings;
(iii) A black and white photocopy that accurately depicts, to the extent possible, the subject matter shown in the color drawing; and
(iv) An amendment to the specification to insert (unless the specification contains or has been previously amended to contain) the following language as the first paragraph of the brief description of the drawings: The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
(b) Photographs.
(1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots (e.g., immunological, western, Southern, and northern), auto radiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.
(2) Color photographs. Color photographs will be accepted in utility and design patent applications if the conditions for accepting color drawings and black and white photographs have been satisfied. See paragraphs (a)(2) and (b)(1) of this section.
(c) Identification of drawings. Identifying indicia, if provided, should include the title of the invention, inventor's name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet and centered within the top margin.
(d) Graphic forms in drawings. Chemical or mathematical formulae, tables, and waveforms may be submitted as drawings and are subject to the same requirements as drawings. Each chemical or mathematical formula must be labeled as a separate figure, using brackets when necessary, to show that information is properly integrated. Each group of waveforms must be presented as a single figure, using a common vertical axis with time extending along the horizontal axis. Each individual waveform discussed in the specification must be identified with a separate letter designation adjacent to the vertical axis.
(e) Type of paper. Drawings submitted to the Office must be made on paper which is flexible, strong, white, smooth, nonshiny, and durable. All sheets must be reasonably free from cracks, creases, and folds. Only one side of the sheet may be used for the drawing. Each sheet must be reasonably free from erasures and must be free from alterations, overwritings, and interlineations. Photographs must be developed on paper meeting the sheetsize requirements of paragraph (I) of this section and the margin requirements of paragraph (g) of this section. See paragraph (b) of this section for other requirements for photographs.
(f) Size of paper. All drawing sheets in an application must be the same size. One of the shorter sides of the sheet is regarded as its top. The size of the sheets on which drawings are made must be:
(1) 21.0 cm. by 29.7 cm. (DIN size A4), or
(2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).
(g) Margins. The sheets must not contain frames around the sight (i.e., the usable surface), but should have scan target points (i.e., crosshairs) printed on two catercorner margin corners. Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.
(h) Views. The drawing must contain as many views as necessary to show the invention. The views may be plan, elevation, section, or perspective views. Detail views of portions of elements, on a larger scale if necessary, may also be used. All views of the drawing must be grouped together and arranged on the sheet(s) without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract. Views must not be connected by projection lines and must not contain center lines. Waveforms of electrical signals may be connected by dashed lines to show the relative timing of the waveforms.
(1) Exploded views. Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.
(2) Partial views. When necessary, a view of a large machine or device in its entirety may be broken into partial views on a single sheet, or extended over several sheets if there is no loss in facility of understanding the view. Partial views drawn on separate sheets must always be capable of being linked edge to edge so that no partial view contains parts of another partial view. A smaller scale view should be included showing the whole formed by the partial views and indicating the positions of the parts shown. When a portion of a view is enlarged for magnification purposes, the view and the enlarged view must each be labeled as separate views.
(i) Where views on two or more sheets form, in effect, a single complete view, the views on the several sheets must be so arranged that the complete figure can be assembled without concealing any part of any of the views appearing on the various sheets.
(ii) A very long view may be divided into several parts placed one above the other on a single sheet. However, the relationship between the different parts must be clear and unambiguous.
(3) Sectional views. The plane upon which a sectional view is taken should be indicated on the view from which the section is cut by a broken line. The ends of the broken line should be designated by Arabic or Roman numerals corresponding to the view number of the sectional view, and should have arrows to indicate the direction of sight. Hatching must be used to indicate section portions of an object, and must be made by regularly spaced oblique parallel lines spaced sufficiently apart to enable the lines to be distinguished without difficulty. Hatching should not impede the clear reading of the reference characters and lead lines. If it is not possible to place reference characters outside the hatched area, the hatching may be broken off wherever reference characters are inserted. Hatching must be at a substantial angle to the surrounding axes or principal upon a suitable view if this can be done without crowding; otherwise, a separate view must be used for this purpose.
(4) Modified forms. Modified forms of construction must be shown in separate views.
(i) Arrangement of views. One view must not be placed upon another or within the outline of another. All views on the same sheet should stand in the same direction and, if possible, stand so that they can be read with the sheet held in an upright position. If views wider than the width of the sheet are necessary for the clearest illustration of the invention, the sheet may be turned on its side so that the top of the sheet, with the appropriate top margin to be used as the heading space, is on the righthand side. Words must appear in a horizontal, lefttoright fashion when the page is either upright or turned so that the top becomes the right side, except for graphs utilizing standard scientific convention to denote the axis of abscissas (of X) and the axis of ordinates (of Y).
(j) Front page view. The drawing must contain as many views as necessary to show the invention. One of the views should be suitable for inclusion on the front page of the patent application publication and patent as the illustration of the invention. Views must not be connected by projection lines and must not contain center lines. Applicant may suggest a single view (by figure number) for inclusion on the front page of the patent application publication and patent.
(k) Scale. The scale to which a drawing is made must be large enough to show the mechanism without crowding when the drawing is reduced in size to twothirds in reproduction. Indications such as "actual size" or "scale 1/2" on the drawings are not permitted since these lose their meaning with reproduction in a different format.
(I) Character of lines, numbers, and letters. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and welldefined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
(m) Shading. The use of shading in views is encouraged if it aids in understanding the invention and if it does not reduce legibility. Shading is used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object. Flat parts may also be lightly shaded. Such shading is preferred in the case of parts shown in perspective, but not for cross sections. See paragraph (h)(3) of this section. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted, except when used to represent bar graphs or color.
(n) Symbols. Graphical drawing symbols may be used for conventional elements when appropriate. The elements for which such symbols and labeled representations are used must be adequately identified in the specification. Known devices should be illustrated by symbols which have a universally recognized conventional meaning and are generally accepted in the art. Other symbols which are not universally recognized may be used, subject to approval by the Office, if they are not likely to be confused with existing conventional symbols, and if they are readily identifiable.
(o) Legends. Suitable descriptive legends may be used subject to approval by the Office, or may be required by the examiner where necessary for understanding of the drawing. They should contain as few words as possible.
(p) Numbers, letters, and reference characters.
(1) Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines, e.g., encircled. They must be oriented in the same direction as the view so as to avoid having to rotate the sheet. Reference characters should be arranged to follow the profile of the object depicted.
(2) The English alphabet must be used for letters, except where another alphabet is customarily used, such as the Greek alphabet to indicate angles, wavelengths, and mathematical formulas.
(3) Numbers, letters, and reference characters must measure at least .32 cm. (1/8 inch) in height. They should not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not cross or mingle with the lines. They should not be placed upon hatched or shaded surfaces. When necessary, such as indicating a surface or cross section, a reference character may be underlined and a blank space may be left in the hatching or shading where the character occurs so that it appears distinct.
(4) The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character, and the same reference character must never be used to designate different parts.
(5) Reference characters not mentioned in the description shall not appear in the drawings.
Reference characters mentioned in the description must appear in the drawings.
(q) Lead lines. Lead lines are those lines between the reference characters and the details referred to. Such lines may be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing. See paragraph (I) of this section.
(r) Arrows. Arrows may be used at the ends of lines, provided that their meaning is clear, as follows:
(1) On a lead line, a freestanding arrow to indicate the entire section towards which it points;
(2) On a lead line, an arrow touching a line to indicate the surface shown by the line looking along the direction of the arrow; or
(3) To show the direction of movement.
(s) Copyright or Mask Work Notice. A copyright or mask work notice may appear in the drawing, but must be placed within the sight of the drawing immediately below the figure representing the copyright or mask work material and be limited to letters having a print size of .32 cm. to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be limited to only those elements provided for by law. For example, "©1983 John Doe" (17 U.S.C. 401) and "*M* John Doe" (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in § 1.71(e) is included at the beginning (preferably as the first paragraph) of the specification.
(t) Numbering of sheets of drawings. The sheets of drawings should be numbered in consecutive Arabic numerals, starting with 1, within the sight as defined in paragraph (g) of this section. These numbers, if present, must be placed in the middle of the top of the sheet, but not in the margin. The numbers can be placed on the righthand side if the drawing extends too close to the middle of the top edge of the usable surface. The drawing sheet numbering must be clear and larger than the numbers used as reference
characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on either side of an oblique line, with the first being the sheet number and the second being the total number of sheets of drawings, with no other marking.
(u) Numbering of views.
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation "FIG." Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.
(2) Numbers and letters identifying the views must be simple and clear and must not be used in association with brackets, circles, or inverted commas. The view numbers must be larger than the numbers used for reference characters.
(v) Security markings. Authorized security markings may be placed on the drawings provided they are outside the sight, preferably centered in the top margin.
(w) Corrections. Any corrections on drawings submitted to the Office must be durable and permanent.
(x) Holes. No holes should be made by applicant in the drawing sheets.
(y) Types of drawings. See § 1.152 for design drawings, § 1.165 for plant drawings, and § 1.174 for reissue drawings.

amendments to drawings must be made in compliance with 37 C.F.R. 1.21(d)

Black and white photographs:
black and white photographs or photomicrographs are acceptable in place of final drawings in order to illustrate inventions that are incapable of being accurately or adequately depicted by India ink drawings

photographs must be developed on paper that is DIN size A4 or 8.5 by 11 inches and they must meet the margin requirements

it is not necessary to send a petition, or a fee or three sets of black and white photographs to the PTO (this was a requirement in the past)
only one set of photographs is necessary, no petition or fee is needed

the Office is sua sponte waiving the requirement of 37 CFR 1.84(a)(2)(iii) for a black and white photocopy of color drawings or color photographs

Drawings:
drawings:
must show every feature of the invention specified in the claims
when an invention is an improvement of an old invention, the drawing must indicate the improved portion
graphic drawing symbols and other labeled representations may be used for conventional elements where they are appropriate
the views in a drawing must not be connected by projection lines and views must not contain center lines

indications such as "actual size" or "scale 0.5" on the drawings is not permitted since these lose their meaning if the sheets are reproduced in a different format

Color drawings and photographs:
color drawings or photographs are not normally permitted in an application

the Office will accept color drawings or photographs in utility or design applications only after granting a petition which:
will require a fee
must meet the requirements of 1.84(a)(2)

the applicant will need to submit the petition if a color photograph or drawing is added at any time during the prosecution

for a continuing application, the petition for color photographs or drawings must be renewed or they will be objected to

Informal drawings:
the rules have been revised to delete the definition for the term "formal drawing" since the Office no longer considers whether drawings are formal or informal
the Office currently reviews drawings to determine whether the drawings are acceptable or not acceptable for publication purpose
a draftsperson's "stamp" indicating approval is no longer required on patent drawings

if an applicant wishes to amend the original drawings at his or her own initiative, the applicant is encouraged to submit new drawings as soon as possible, and preferably before allowance of the application
examiners should not require new drawings merely because the applicant indicated that the drawings submitted at the time of the filing were informal

Transfer of drawings:
the transfer of drawings from a first pending application to another will be made only upon the granting of a petition filed under 37 C.F.R. 1.182, which must set forth a hardship situation requiring such a transfer of drawings

Models, exhibits and specimens:

§ 1.91 Models or exhibits not generally admitted as part of application or patent.
(a) A model or exhibit will not be admitted as part of the record of an application unless it:
(1) Substantially conforms to the requirements of § 1.52 or § 1.84;
(2) Is specifically required by the Office; or
(3) Is filed with a petition under this section including:
(i) The fee set forth in § 1.17(h); and
(ii) An explanation of why entry of the model or exhibit in the file record is necessary to demonstrate patentability.
(b) Notwithstanding the provisions of paragraph (a) of this section, a model, working model, or other physical exhibit may be required by the Office if deemed necessary for any purpose in examination of the application.

models are generally not admitted as part of an application; unless:
they conform to the standards
they were requested by the Office
they are filed with a petition

§ 1.93 Specimens.
When the invention relates to a composition of matter, the applicant may be required to furnish specimens of the composition, or of its ingredients or intermediates, for the purpose of inspection or experiment.

specimens may be needed in an application, especially those containing biotechnological developments

Tables
if a lengthy table is submitted on a CD or in electronic format, the table will not be published as part of the patent document
it will be published on the sequence homepage of the USPTO internet web site and the patent document will include a standardized "lengthy table" statement

Deposit of computer program listings:
an application involving a computer program must list the computer program as a sequence of the instructions, routines and other contents of a computer program

if a computer program is eleven pages or longer, it must be put on microfiche

if the computer program is 10 pages or less, it must be submitted either as drawings or as part of the specification and it must be referred to in the specification

Additional points related to the disclosure:

New matter:
Matter not contained in the original specification, claims, or drawings is usually considered new Matter. New matter may not be added once the application has been filed. The only way to add new matter is to file a CIP. You cannot simply add matter to an application in an amendment.

where new matter is confined to amendments in the specification, a review of the examiner's requirement for the cancellation of it is by way of petition

where the alleged new matter is introduced into or affects the claims, and results in their rejection, the question becomes an appealable one

Essential material:
material is said to be essential if it is necessary in order to comply with the statutory requirements of the disclosure
i.e., the disclosed invention can not be properly described without it

essential material is necessary to:
describe the claimed invention
provide the enabling disclosure of the claimed invention describe the best mode

an application may incorporate by reference essential material by reference to a U.S. patent application publication

the reasons for incorporating references in patents is to:
provide the public with a patent disclosure which minimizes the public's burden to search for and obtain copies of documents incorporated by reference which may not be readily available

essential material may be incorporated by reference if it is from:
a U.S. patent
a pending U.S. application
an abandoned application less than 20 years old can be incorporated by reference to the same extent as a copending application

material not allowed to be incorporated by reference in a U.S. utility patent application includes:
essential material from a foreign patent or application
essential material from a magazine article
a U.S. patent that incorporates the material from another patent by reference

Nonessential material:
nonessential material is the background material, it may be incorporated by reference to:
patents or applications published in the U.S.
from publications or foreign patents
from a prior filed, commonly owned U.S. application

Substitute specification:
a substitute specification may be filed as long as it contains no new matter, and:
any additions and deletions are not underlined or bracketed in the submitted substitute
it may be submitted up until the issue fee is paid
the applicant must:
be sure no new material has been added to it
include a markedup copy
include a copy in the corrected form

the paragraphs of any substitute specification, other than the claims, should be individually numbered in Arabic numerals so that any amendment to the specification may be made by replacement paragraphs

substitute specifications are not permitted in:
reissue applications reexamination proceedings

IDS

609 Information disclosure statement
Information Disclosure Statements basically consist of the information that was gained from the patent search. An IDS should include a list of all patents, publications or other information relevant to the invention.

§ 1.98 Content of information disclosure statement.
(a) Any information disclosure statement filed under § 1.97 shall include:
(I) A list of all patents, publications, applications, or other information submitted for consideration by the Office;
(2) A legible copy of:
(i) Each U.S. patent application publication and U.S. and foreign patent;
(ii) Each publication or that portion which caused it to be listed;
(iii) For each cited pending U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion; and
(iv) All other information or that portion which caused it to be listed; and
(3) (i) A concise explanation of the relevance, as it is presently understood by the
individual designated in § 1.56(c) most knowledgeable about the content of the information, of each patent, publication, or other information listed that is not in the English language. The concise explanation may be either separate from applicant's specification or incorporated therein.
(ii) A copy of the translation if a written Englishlanguage translation of a nonEnglishlanguage document, or portion thereof, is within the possession, custody, or control of, or is readily available to any individual designated in § 1.56(c).
(b) (1) Each U.S. patent listed in an information disclosure statement must be identified by inventor, patent number, and issue date.
(2) Each U.S. patent application publication listed in an information disclosure statement shall be identified by applicant, patent application publication number, and publication date.
(3) Each U.S. application listed in an information disclosure statement must be identified by the inventor, application number, and filing date.
(4) Each foreign patent or published foreign patent application listed in an information disclosure statement must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application.
(5) Each publication listed in an information disclosure statement must be identified by publisher,
author (if any), title, relevant pages of the publication, date, and place of publication.
(c) When the disclosures of two or more patents or publications listed in an information disclosure statement are substantively cumulative, a copy of one of the patents or publications may be submitted without copies of the other patents or publications, provided that it is stated that these other patents or publications are cumulative.
(d) A copy of any patent, publication, pending U.S. application or other information, as specified in paragraph (a) of this section, listed in an information disclosure statement is required to be provided, even if the patent, publication, pending U.S. application or other information was previously submitted to, or cited by, the Office in an earlier application, unless:
(1) The earlier application is properly identified in the information disclosure statement and is relied on for an earlier effective filing date under 35 U.S.C. 120; and
(2) The information disclosure statement submitted in the earlier application complies with paragraphs (a) through (c) of this section.

Summary of Information Disclosure Statements (IDS):
a copy of each U.S. patent or patent application publication listed in an IDS has been eliminated unless required by the Office;
information which has been considered by the Office in the parent application of a CPA filed under 37 C.F.R. 1.53(d), will be part of the file before the examiner;
it will not need to be resubmitted to have the information considered and listed on the patent;
the examiner will consider information which has been considered by the Office in a parent application when examining a continuation application, a divisional application or a continuationinpart application filed under 37 C.F.R. 1.53(b);
a listing of the information will not need to be resubmitted unless the applicant desires that the information be printed on the patent;
information which has been considered by the Office in the application before the filing of a RCE will be part of the file before the examiner;
it will not need to be resubmitted to have the information considered by the examiner and listed on the patent;
if the IDS has not yet been considered in the parent application and a CPA is filed, the information filed in the parent application will be considered;
if the IDS has not yet been considered in the parent application and a continuation, divisional, or continuationinpart has been filed, the applicant must resubmit the information;
an IDS sent in before an RCE was filed will be used after the filing of the RCE.
consideration by the examiner of the information submitted in an IDS means nothing more than considering the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search
IDS's are not allowed in provisional applications

every IDS must have:
a copy of every patent, publication or other information being submitted
any patents must be identified by:
patentee
patent number
issue date
publications must be identified by:
author
title
relevant pages
date and place of publication

English requirements:
if a nonEnglish reference is submitted, the applicant shall include a copy of the translation if an Englishlanguage translation is available
otherwise, a concise explanation of the relevance to the information not in the English language must be accompanied with the documents
if translated into English, no concise explanation is necessary

Details for listing references:
all patents listed must be identified by patentee, patent number and issue date
the application number is not needed

each publication listed on an IDS must be identified by publisher, author (if any), title, relevant pages of the publication, date and place of publication

if two or more references contain cumulative disclosures, a copy of only one of the references is required as long as it is stated that the others are cumulative

a copy of any references listed in an IDS is required, even if the patent, publication, pending U.S. application or other information was previously submitted to, or cited by the Office in an earlier application unless:
the earlier application is properly identified in the IDS and is relied on for an earlier, effective filing date under 35 U.S.C. 120
the IDS submitted in the earlier application is in full compliance with regulations

other documents submitted as part of the applicant's reply to an Office action:
documents submitted as evidence directed to an issue of patentability raised in an Office action need not satisfy the requirements of 37 C.F.R. 1.97 and 37 C.F.R. 1.98
compliance with IDS rules does not apply to all types of information sent in by an applicant to support an argument made in a reply to an Office action

noncomplying IDS's:
IDS's that do not comply with 37 C.F.R. 1.97 or 37 C.F.R. 1.98 will be placed in a file, but not considered by the Office and a record of the noncompliance will be sent back to the applicant

Duty to disclose:
the duty to disclose relevant materials cannot be postponed, action must be taken immediately when materials relevant to the patentability are discovered

Proper time for filing an IDS:
The time period for filing an IDS is a complicated subject. The general trend is that more requirements are placed on the applicant the later the IDS is filed during the prosecution of the application. The time for filing an IDS cannot be extended under 1.136(a) or (b). The details correlating to the time to file an IDS will be asked on the exam in at least one question.

§ 1.97 Filing of information disclosure statement.
(a) In order for an applicant for a patent or for a reissue of a patent to have an information disclosure statement in compliance with § 1.98 considered by the Office during the pendency of the application, the information disclosure statement must satisfy one of paragraphs (b), (c), or (d) of this section.
(b) An information disclosure statement shall be considered by the Office if filed by the applicant within any one of the following time periods:
(1) Within three months of the filing date of a national application other than a continued prosecution application under § 1.53(d);
(2) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
(3) Before the mailing of a first Office action on the merits; or
(4) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.
(c) An information disclosure statement shall be considered by the Office if filed after the period specified in paragraph (b) of this section, provided that the information disclosure statement is filed before the mailing date of any of a final action under § 1.113, a notice of allowance under § 1.311, or an action that otherwise closes prosecution in the application, and it is accompanied by one of:
(1) The statement specified in paragraph (e) of this section; or
(2) The fee set forth in § 1.17(p).
(d) An information disclosure statement shall be considered by the Office if filed by the applicant after the period specified in paragraph (c) of this section, provided that the information disclosure statement is filed on or before payment of the issue fee and is accompanied by:
(1) The statement specified in paragraph (e) of this section; and
(2) The fee set forth in § 1.17(p).
(e) A statement under this section must state either:
(1) That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign
application not more than three months prior to the filing of the information disclosure statement; or
(2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.
(f) No extensions of time for filing an information disclosure statement are permitted under § 1.136. If a bona fide attempt is made to comply with § 1.98, but part of the required content is inadvertently omitted, additional time may be given to enable full compliance.
(g) An information disclosure statement filed in accordance with section shall not be construed as a representation that a search has been made.
(h) The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).
(i) If an information disclosure statement does not comply with either this section or § 1.98, it will be placed in the file but will not be considered by the Office.

if the IDS submitted in the parent application complies with 1.98, the applicant will not need to resubmit copies of the documents in the continuing application

Category 1:
An IDS that is filed before the first Office Action or within 3 months of the application's filing date fits under category 1.

the specifics of this time period include that the IDS was filed: within 3 months of the filing date of a national application
national applications include all continuing applications (continuations,
divisional and continuationsinpart)
the 3 month time period is measured from the actual filing date, not the effective
filing date of the continuing application
within 3 months of date of the entry of an application entering the national stage as set
forth in 37 C.F.R. 1.491 in an international application
before the mailing date of a first Office action on the merits
an Office action is mailed on the date indicated in the Office action

an IDS will be considered to have been filed:
on the day it was received in the Office, or
on an earlier date of mailing if it is accompanied by a properly executed certificate of mailing or facsimile transmission under 37 C.F.R. 1.8, or
if it is in proper compliance with the provisions for "Express Mail"

an IDS that fits under category 1 does not have any further requirements other than its submittal these do not need to be filed with a fee or a statement

Category 2:
This applies to all IDS 's filed after the deadlines for category 1 have passed, but before a final action under 37 C.F.R. 1.113 (e.g. final rejection) or a Notice ofAllowance has been sent out (whichever occurs first).

if a final Office action or a Notice of Allowance is mailed referring to a particular application, but either is later withdrawn or a Notice of Allowance is mailed, the application will be considered as not having a final action:
an Ex parte Quayle action is not a final action under 37 C.F.R. 1.113 as referred to in 37 C.F.R. 1.97 so it will qualify under category 2
where Ex part Quayle action is issued after a final rejection (that has not been withdrawn), the IDS will not qualify under this section, it will fit under category 3

Further requirements for category 2:
all IDS's filed under category 2 require the submission of the IDS itself, plus a statement under 37 C.F.R. 1.97(e) or a 1.17(p) fee
the statements basically serve as a check to insure that the applicant(s) were not aware of the material included in the IDS which pertains to the patentability of the subject matter of the application before they filed the application

a statement under 37 C.F.R. 1.97(e) must indicate that either:
each item in the IDS was cited in a communication such as a search report from a patent office outside the U.S. in a counterpart foreign application not more than 3 months prior to the filing of the statement
it does not matter if the applicant, attorney or agent know of information cited before receiving search report
or
that no item in the IDS was from a communication from a foreign patent office in a counterpart foreign application*, and to the knowledge of the person whose signature is on this statement, no item in the IDS was known to the attorney, agent or inventor for more than 3 months prior to the filing of the IDS

*a counterpart foreign application means that a claim for priority has been made in either a U.S. application or a foreign application based on the other, or that the disclosures of the U.S. and foreign patent applications are substantially identical

a copy of the foreign search report is not required with 37 C.F.R. 1.97(e)
individuals may wish to submit an English language version

to clarify, 37 C.F.R. 1.97(e) can contain either of the two statements:
they need not be in the form of an oath or declaration, just a statement will do

summary of the 37 C.F.R. 1.97(e) statements:
the IDS was filed within the 3 month period of either: the first citation by a foreign patent office or
the first discovery of the information

an IDS may include two lists with references to both the statements if the references were from both of the two categories

Category 3:
This will be applicable if the IDS is filed on or after the mailing date of either a final action under 37 C.F.R. 1.113 or a Notice ofAllowance under 37 C.F.R. 1.311, whichever occurs first, but in order to fall under this category, it must have been sent before or simultaneous with the payment of the issue fee

this is the latest stage of prosecution that information submitted to the PTO will be accepted:
the examiner has already reached a final decision on patentability at this stage
in order to qualify under this section, the IDS must be sent before the patent issue fee is paid

if the application is withdrawn from issue under one of the provisions of C.F.R. 1.313(b), it will be treated as though no Notice of Allowance had been mailed and issue fee had not yet been paid with regard to the time for the filing of the IDS

an IDS under category 3 must be accompanied by a:
statement under 37 C.F.R. 1.97(e) as described above
petition for an IDS (which is just a request for the PTO to consider the information being submitted)
fee

IDS after payment of issue fee:
these will not be considered, the IDS will just be placed in the application file
after the payment of the issue fee, it is impractical for the Office to consider any IDS's

if the applicant really needs to send in an IDS after the issue fee has been paid, the options are as follows:
the application may be withdrawn from issue so that the information can be considered in a continuing application under 37 C.F.R. 1.53(b)
for continuing applications under 1.53(b), an applicant does not need to resubmit the IDS anymore

the application may be withdrawn from issue so a CPA under 1.53(d) may be filed even though the issue fee was paid
for a CPA under 1.53(d), the applicant will not have to resubmit the IDS

Further details:
if bona fide attempt is made to comply with the content requirements of 37 C.F.R. 1.98, but part of the IDS is inadvertently omitted, additional time may be given to enable full compliance

to summarize, an IDS must be filed:
either within three months of the application filing date or before the first Office action
if after the first Office action, but before final Office action, either a statement or a fee must be provided
if after the final Office action or Notice of Allowance is filed, but before payment of issue fee, a statement, a petition, and fee are required

the filing of a request for continued examination under 37 C.F.R. 1.114 is not considered a filing of an application:
it is merely a continuation of the prosecution in the current application
37 C.F.R. 1.97(b)(4) does not provide a 3month window for submitting an IDS after the filing of a request for continued examination

an IDS must be filed in a reissue within two months of its filing date

Examples:
if an applicant receives a Notice of Allowance, but has not yet paid the issue fee and then he or she happens to find a publication that is relevant to the patentability of the claimed invention, what should the applicant do?
prior to paying the issue fee, the applicant should file an IDS disclosing the article, a statement as specified in 37 C.F.R. 1.97(e), a petition requesting consideration of the IDS and the petition fee

if a Notice of Allowance is already mailed by the PTO and the issue fee was paid, and then a prior art reference material to patentability is found what should the applicant do?
the applicant should file a petition to have the application withdrawn from issuance,
citing the finding of additional material prior art as the reason for withdrawal

a continuation application should also be filed with IDS containing the reference in order to have the reference considered
Requirements for information under 37 C.F.R. 1.105 (see MPEP 700Prosecution section):
if a copy of a particular article listed in an IDS is needed by 3 months and it cannot be found within that period of time, what can the applicant do in order to receive a onemonth extension?
file a petition (stating the information needed is not readily available)
pay a fee

At a glance:
Summary of requirements based on the time when an IDS is filed.

Time	Requirements
1) Within 3 months of filing or before the first office action on the merits	none (it is always considered) no fee or statement under 37 C.F.R. 1.97(e) required
2) After the time stated in (1), but before final action or Notice of Allowance	37 C.F.R. 1.97(e) statement or 37 C.F.R. 1.17(p) fee
3) After final action or Notice of Allowance, but before the payment of the Issue Fee	37 C.F.R. 1.97(e) statement, petition, and petition fee