35 U.S.C. § 111

Application

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(a)In General.—(1)Written application.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.(2)Contents.—Such application shall include—(A) a specification as prescribed by section 112;(B) a drawing as prescribed by section 113; and(C) an oath or declaration as prescribed by section 115.(3)Fee, oath or declaration, and claims.—The application shall be accompanied by the fee required by law. The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.(4)Filing date.—The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.(b)Provisional Application.—(1)Authorization.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—(A) a specification as prescribed by section 112(a); and(B) a drawing as prescribed by section 113.(2)Claim.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.(3)Fee.—The application shall be accompanied by the fee required by law. The fee may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned.(4)Filing date.—The filing date of a provisional application shall be the date on which a specification, with or without claims, is received in the United States 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), 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 12-month period.(6)Other basis for provisional application.—Subject to all the conditions in this subsection and section 119(e), 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, 365(a), or 386(a) or to the benefit of an earlier filing date in the United States under section 120, 121, 365(c), or 386(c).(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 131 and 135.(c)Prior Filed Application.—Notwithstanding the provisions of subsection (a), the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director. A failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. Such application shall be treated as having never been filed, unless—(1) the application is revived under section 27; and(2) a copy of the specification and any drawings of the previously filed application are submitted to the Director.(July 19, 1952, ch. 950, 66 Stat. 798; Pub. L. 97–247, § 5, Aug. 27, 1982, 96 Stat. 319; Pub. L. 103–465, title V, § 532(b)(3), Dec. 8, 1994, 108 Stat. 4986; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4732(a)(10)(A), 4801(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582, 1501A–588; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, §§ 3(e)(2), 4(a)(3), (d), 20(j), Sept. 16, 2011, 125 Stat. 287, 295, 296, 335; Pub. L. 112–211, title I, § 102(3), title II, § 201(a), Dec. 18, 2012, 126 Stat. 1531, 1533.)Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., § 33 (R.S. 4888, amended (1) Mar. 3, 1915, ch. 94, § 1, 38 Stat. 958; (2) May 23, 1930, ch. 312, § 2, 46 Stat. 376).

The corresponding section of existing statute is divided into an introductory section relating to the application generally (this section) and a section on the specification (sec. 112).

The parts of the application are specified and the requirement for signature is placed in this general section so as to insure that only one signature will suffice.

Editorial NotesAmendments

2012—Subsec. (a)(3), (4). Pub. L. 112–211, § 201(a)(1), added pars. (3) and (4) and struck out former pars. (3) and (4) which related to fee and oath or declaration and failure to submit.

Subsec. (b)(3), (4). Pub. L. 112–211, § 201(a)(2), added pars. (3) and (4) and struck out former pars. (3) and (4) which related to fee and filing date of a provisional application.

Subsec. (b)(7). Pub. L. 112–211, § 102(3), substituted “section 119, 365(a), or 386(a)” for “section 119 or 365(a)” and “section 120, 121, 365(c), or 386(c)” for “section 120, 121, or 365(c)”.

Subsec. (c). Pub. L. 112–211, § 201(a)(3), added subsec. (c).

2011—Subsec. (a)(2)(A). Pub. L. 112–29, § 20(j), struck out “of this title” after “112”.

Subsec. (a)(2)(B). Pub. L. 112–29, § 20(j), struck out “of this title” after “113”.

Subsec. (a)(2)(C). Pub. L. 112–29, § 20(j), struck out “of this title” after “115”.

Pub. L. 112–29, § 4(a)(3)(A), substituted “or declaration” for “by the applicant”.

Subsec. (a)(3). Pub. L. 112–29, § 4(a)(3)(B), (C), inserted “or declaration” after “and oath” in heading and text.

Subsec. (a)(4). Pub. L. 112–29, § 4(a)(3)(C), inserted “or declaration” after “and oath” in two places.

Subsec. (b)(1)(A). Pub. L. 112–29, § 4(d)(1), substituted “section 112(a)” for “the first paragraph of section 112 of this title”.

Subsec. (b)(1)(B). Pub. L. 112–29, § 20(j), struck out “of this title” after “113”.

Subsec. (b)(2). Pub. L. 112–29, § 4(d)(2), substituted “subsections (b) through (e) of section 112,” for “the second through fifth paragraphs of section 112,”.

Subsec. (b)(5). Pub. L. 112–29, § 20(j), struck out “of this title” after “119(e)(3)”.

Subsec. (b)(6). Pub. L. 112–29, § 20(j), struck out “of this title” after “119(e)”.

Subsec. (b)(7). Pub. L. 112–29, § 20(j), struck out “of this title” after “365(a)” and after “365(c)”.

Subsec. (b)(8). Pub. L. 112–29, § 20(j), struck out “of this title” before period at end.

Pub. L. 112–29, § 3(e)(2), substituted “sections 131 and 135” for “sections 115, 131, 135, and 157”.

2002—Subsecs. (a)(1), (3), (4), (b)(1), (3)(B), (C), (6). Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment notes below.

1999—Subsecs. (a)(1), (3), (4), (b)(1), (3)(B), (C). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, substituted “Director” for “Commissioner”.

Subsec. (b)(5). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4801(a)], amended heading and text of par. (5) generally. Prior to amendment, text read as follows: “The provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival thereafter.”

Subsec. (b)(6). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, substituted “Director” for “Commissioner”.

1994—Pub. L. 103–465 amended section generally. Prior to amendment, section read as follows: “Application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Commissioner. Such application shall include (1) a specification as prescribed by section 112 of this title; (2) a drawing as prescribed by section 113 of this title; and (3) an oath by the applicant as prescribed by section 115 of this title. The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Commissioner. Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Commissioner that the delay in submitting the fee and oath was unavoidable. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.”

1982—Pub. L. 97–247 inserted “, or authorized to be made,” after “shall be made”, struck out the colon after “shall include”, struck out “signed by the applicant and” after “The application”, and inserted provisions that the fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Commissioner, that upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Commissioner that the delay in submitting the fee and oath was unavoidable, and that the filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

Statutory Notes and Related SubsidiariesEffective Date of 2012 Amendment

Amendment by section 102(3) of Pub. L. 112–211 effective on the later of the date that is 1 year after Dec. 18, 2012, or the date that the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs enters into force with respect to the United States (May 13, 2015), and applicable only to certain applications filed on and after that effective date and patents issuing thereon, see section 103 of Pub. L. 112–211, set out as a note under section 100 of this title.

Amendment by section 201(a) of Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012, applicable to certain patents and applications for patent, and not effective with respect to patents in litigation commenced before the effective date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title.

Effective Date of 2011 Amendment

Pub. L. 112–29, § 3(e)(3), Sept. 16, 2011, 125 Stat. 288, provided that: “The amendments made by this subsection [amending this section and repealing section 157 of this title] shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act [Sept. 16, 2011], and shall apply to any request for a statutory invention registration filed on or after that effective date.”

Pub. L. 112–29, § 4(e), Sept. 16, 2011, 125 Stat. 297, provided that: “The amendments made by this section [amending this section and sections 112, 115, 118, 121, and 251 of this title] shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent application that is filed on or after that effective date.”

Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 1999 Amendment

Amendment by section 1000(a)(9) [title IV, § 4732(a)(10)(A)] of Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Amendment by section 1000(a)(9) [title IV, § 4801(a)] of Pub. L. 106–113 effective Nov. 29, 1999, and applicable to any provisional application filed on or after June 8, 1995, see section 1000(a)(9) [title IV, § 4801(d)] of Pub. L. 106–113, set out as a note under section 119 of this title.

Effective Date of 1994 Amendment

Amendment by Pub. L. 103–465 effective 6 months after Dec. 8, 1994, and applicable to all patent applications filed in the United States on or after that effective date, with provisions relating to earliest filed patent application, see section 534(b)(1), (3) of Pub. L. 103–465, set out as a note under section 154 of this title.

Effective Date of 1982 Amendment

Amendment by Pub. L. 97–247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L. 97–247, set out as an Effective Date note under section 294 of this title.

Emergency Relief From Postal Situation Affecting Patent, Trademark, and Other Federal Cases

Pub. L. 92–34, June 30, 1971, 85 Stat. 87, provided that a patent or trademark application would be considered filed in the United States Patent Office on the date that it would have been received by the Patent Office except for the delay caused by emergency situation affecting postal service from Mar. 18, 1970 to Mar. 30, 1970, if a claim was made.

Notes of Decisions

Cited in 160 cases (20 in the last 5 years), 1949–2025 · leading case: Dominique Dubost v. U.S. Pat. & Trademark Off., 777 F.2d 1561 (Fed. Cir. 1985).

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Dominique Dubost v. U.S. Pat. & Trademark Off., 777 F.2d 1561 (Fed. Cir. 1985). · cites it 8× “It was further argued that the Commissioner waives the literal requirement of 35 U.S.C. § 111 that the application be “accompanied by the fee required by law” whenever payment is made by check because actual payment on a check is not made until the check is deposited and the…”

St. John's Univ., New York v. Bolton, 757 F. Supp. 2d 144 (E.D.N.Y 2010). · cites it 2× “, 35 U.S.C. § 111 (patent application to be filed by the inventor), and it is used as such in this Memorandum and Order.”

Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984). · cites it 2× “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]…”

New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., & Earth Tool Co., L.L.C., 298 F.3d 1290 (Fed. Cir. 2002). · cites it 2× “See 35 U.S.C. § 111 (b). Such a provisional application need only include a specification conforming to the requirements of 35 U.”

Kaempe, Staffan v. Myers, George, 367 F.3d 958 (D.C. Cir. 2004). “See 35 U.S.C. §§ 111 (a)(1), 116 (2000). While a patent application is pending, an applicant may file a continuation-in-part (“CIP”) application for an invention having some subject matter in common with the original application and some new subject matter.”

Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284 (Fed. Cir. 2006). · cites it 2× “§ 102 (b) & (d) (establishing statutory one-year bars to patentability); 35 U.S.C. § 111 (a)(2)(C) (requiring submission of an oath by the applicant); 35 U.”

Baxter Int'l, Inc., & Baxter Healthcare Corp. v. McGaw Inc., Defendant-Cross, 149 F.3d 1321 (Fed. Cir. 1998). · cites it 2× “The sole question before this court, then, is whether the submission of a set of claims, accompanied by instructions to the PTO to cancel those claims, satisfies the requirement of 35 U.”

Figueroa v. United States, 466 F.3d 1023 (Fed. Cir. 2006). · cites it 2× “2 Failure to pay application or issuance fees is treated as an abandonment of the application, 35 U.S.C. §§ 111 (a)(4), 151 (2000); failure to pay required maintenance fees results in expiration of the patent, 35 U.”

Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974). · cites it 2× “§ 154 provides: "Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, for the term of seventeen years, subject to the payment of issue fees as provided for in this title, of the right to exclude others from making, using,…”

United States v. Camick, 796 F.3d 1206 (10th Cir. 2015). · cites it 2× “pdf; see also 35 U.S.C. § 111 (b) (describing the requirements of a provisional patent application); id.”

Irons & Sears v. C. Marshall Dann, 606 F.2d 1215 (D.C. Cir. 1979). · cites it 2× “Pursuant to 35 U.S.C. § 111 (1976) such an application must include a number of items, among them a specification describing the invention and claiming the subject matter which the applicant regards as his, a drawing (where appropriate), an oath, the signature of the applicant,…”

Huawei Techs., Co. v. Samsung Elecs. Co., 340 F. Supp. 3d 934 (N.D. Cal. 2018). “33 See 35 U.S.C. § 111 (b)(5). "It has long been settled, and we continue to approve the rule, that an abandoned application, with which no subsequent application was copending, cannot be considered a constructive reduction to practice.”

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