(a) Applications for patents must be made to the Director of the United States Patent and Trademark Office. An application transmittal letter limited to the transmittal of the documents and fees comprising a patent application under this section may be signed by a juristic applicant or patent owner.
(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) The inventor's oath or declaration, see §§ 1.63 and 1.64;
(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 35 U.S.C. 112(a), 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.
[62 FR 53185, Oct. 10, 1997, as amended at 65 FR 54664, Sept. 8, 2000; 68 FR 14336, Mar. 25, 2003; 70 FR 3889, Jan. 27, 2005; 77 FR 46624, Aug. 6, 2012; 77 FR 48816, Aug. 14, 2012; 78 FR 62396, Oct. 21, 2013]
Notes of Decisions
Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984).
“The PTO has expressly incorporated these regulations into its own internal procedures for incomplete applications: “If the application papers are too informal to be given a filing date, the case is held in the Application Division as an incomplete [emphasis in original]…”
Baxter Int'l, Inc., & Baxter Healthcare Corp. v. McGaw Inc., Defendant-Cross, 149 F.3d 1321 (Fed. Cir. 1998).
“51 , make clear the requirement that an application for a patent must include (1) a specification (which includes both the written description and the claims) and claims [sic],-(2) a drawing, (3) an oath or declaration, and (4) a filing fee. The omission of any owe of these…”
Glaxo Inc. & Glaxo Grp. Ltd. v. Novopharm Ltd., 52 F.3d 1043 (Fed. Cir. 1995).
“The inventor(s) must submit an oath or declaration attesting that they have “reviewed and understand[] the contents of the specification” and believe “the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and…”
United States v. Camick, 796 F.3d 1206 (10th Cir. 2015).
“§ 119(e)(1) (granting provisional patent applications the benefit of priority); 37 C.F.R. § 1.51 (describing the contents of a provisional patent application).”
Cytologic, Inc. v. Biopheresis Gmbh, 682 F. Supp. 2d 1 (D.D.C. 2010).
· cites it 2× “2009); see generally 37 C.F.R. § 1.51 . A patent application consists of a specification of the proposed patent, including a claim or claims, an oath or declaration, drawings as may be necessary, and the appropriate filing fee.”
Htc Corp. v. Ipcom Gmbh & Co., Kg, 671 F. Supp. 2d 146 (D.D.C. 2009).
· cites it 2× “37 C.F.R. § 1.51 (a). A complete patent application includes: a specification including one or more claims; an oath or declaration that the applicant believes himself to be the original inventor of the process or invention to be patented; drawings, if necessary; and the…”
Spine v. Biedermann Motech Gmbh, 684 F. Supp. 2d 68 (D.D.C. 2010).
· cites it 2× “2009); see gener *73 ally 37 C.F.R. § 1.51 . A patent application consists of a specification of the proposed patent as prescribed by 35 U.”
Astech Int'l, LLC v. Husick, 676 F. Supp. 2d 389 (E.D. Pa. 2009).
“It includes: "(1) a written specification, including one or more claims; (2) an oath or declaration that the named inventor or inventors are believed to be the original and first inventor or inventors of the claimed subject matter; (3) drawings as required to support the…”
In re Clemens, 622 F.2d 1029 (C.C.P.A. 1980).
“1977), which is based on 37 CFR 1.51, provides, in pertinent part: 601 Content of Application * * * * * * GUIDELINES FOR DRAFTING A MODEL PATENT APPLICATION The following guidelines illustrate the preferred layout and content for patent applications.”
Intervet, Inc. v. Merial Ltd., 643 F. Supp. 2d 97 (D.D.C. 2009).
“37 C.F.R. § 1.51 (b)(1). A specification must include both a written description of the invention and an enablement for a claimed invention that explains the “manner and process of making and using [the invention], in such full, clear, concise, and exact terms as to enable any…”
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