MPEP 601
Content of Provisional and Nonprovisional Applications

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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601    Content of Provisional and Nonprovisional Applications [R-07.2015]

35 U.S.C. 111 Application.

[Editor Note: Applicable to any patent application filed under this provision on or after December 18, 2013. See pre-PLT (AIA) 35 U.S.C. 111 or pre-AIA 35 U.S.C. 111 for the law otherwise applicable.]

  • (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—
    • (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—
    • (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) 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, 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.

35 U.S.C. 111 (pre-PLT (AIA)) Application.

[Editor Note: Applicable to any patent application filed on or after September 16, 2012, and before December 18, 2013. See 35 U.S.C. 111 or pre-AIA 35 U.S.C. 111 for the law otherwise applicable.]

  • (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—
    • (3) FEE AND OATH OR DECLARATION.—The application must be accompanied by the fee required by law. The fee and oath or declaration 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.
    • (4) FAILURE TO SUBMIT.—Upon failure to submit the fee and oath or declaration 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 and oath or declaration was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
  • (b) PROVISIONAL APPLICATION.—
    • (1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
    • (2) CLAIM.—A claim, as required by subsections (b) through (e) 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), 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) 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) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(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.

Pre-AIA 35 U.S.C. 111 requirements substantially correspond to those of pre-PLT (AIA) 35 U.S.C. 111, but do not include conforming amendments with regard to the oath or declaration provisions and other miscellaneous provisions of the AIA.

37 C.F.R. 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. 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 to1.77;
    • (2) The inventor’s oath or declaration, see §§ 1.63 and 1.64;
    • (3) Drawings, when necessary, see §§ 1.81 to1.85; 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.

I.    GUIDELINES FOR DRAFTING A NONPROVISIONAL PATENT APPLICATION UNDER 35 U.S.C. 111(a)

The following guidelines illustrate the preferred layout and content of patent applications filed under 35 U.S.C. 111(a). These guidelines are suggested for the applicant’s use. See also 37 CFR 1.77 and MPEP § 608.01(a). If an application data sheet (37 CFR 1.76 ) is used, data supplied in the application data sheet need not be provided elsewhere in the application with one exception for applications filed before September 16, 2012. For such applications, the citizenship of each inventor must be provided in the oath or declaration under pre-AIA 37 CFR 1.63 even if this information is provided in the application data sheet (see pre-AIA 37 CFR 1.76(b) ). If there is a discrepancy between the information submitted in an application data sheet and the information submitted elsewhere in the application, the application data sheet will control except for the naming of the inventors which is governed by 37 CFR 1.41 and, for applications filed before September 16, 2012, the citizenship of the inventors. See MPEP § 601.05.

A complete application filed under 35 U.S.C. 111(a) comprises a specification, including claims, as prescribed by 35 U.S.C. 112, drawings as prescribed by 35 U.S.C. 113, an oath or declaration as prescribed by 35 U.S.C. 115, and the prescribed filing fee, search fee, examination fee and application size fee.

   Arrangement and Contents of the Specification

The following order of arrangement is preferable in framing the specification. See also MPEP § 608.01(a). Each of the lettered items should appear in upper case, without underlining or bold type, as section headings.

  • (A) Title of the invention. (See MPEP § 606).
  • (B) Cross-reference to related applications. (See MPEP § 211 et seq.).
  • (C) Statement regarding federally sponsored research or development. (See MPEP § 310).
  • (D) The names of the parties to a joint research agreement (see 37 CFR 1.71(g) ).
  • (E) Reference to a "Sequence Listing," a table, or a computer program listing appendix submitted on compact disc and an incorporation-by-reference of the material on the compact disc.
  • (F) Statement regarding prior disclosures by an inventor or joint inventor.
  • (G) Background of the invention. (See MPEP § 608.01(c)).
    • (1) Field of the invention.
    • (2) Description of related art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98.
  • (H) Brief summary of the invention. (See MPEP § 608.01(d)).
  • (I) Brief description of the several views of the drawing. (See MPEP § 608.01(f)).
  • (J) Detailed description of the invention. (See MPEP § 608.01(g)).
  • (K) Claim(s) (commencing on a separate sheet). (See MPEP § 608.01(i)-(p)).
  • (L) Abstract of the Disclosure (commencing on a separate sheet). (See MPEP § 608.01(b)).
  • (M) Sequence Listing, if on paper (see 37 CFR 1.821 through 37 CFR 1.825 ).

II.    GUIDELINES FOR DRAFTING A PROVISIONAL APPLICATION UNDER 35 U.S.C. 111(b)

A provisional application should preferably conform to the arrangement guidelines for nonprovisional applications. The specification must, however, comply with 35 U.S.C. 112(a) and refer to drawings, where necessary for an understanding of the invention. Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims. Furthermore, no oath or declaration is required. See MPEP § 201.04.

A cover sheet providing identifying information is required for a complete provisional application. In accordance with 37 CFR 1.51(c)(1) the cover sheet must state that it is for a provisional application, it must identify and give the residence of the inventor or inventors, and it must give a title of the invention. The cover sheet must also give the name and registration number of the attorney or agent (if applicable), the docket number used by the person filing the application (if applicable) and the correspondence address. If there is a governmental interest, the cover sheet must include a statement as to rights to inventions made under federally sponsored research and development (See MPEP § 310). 37 CFR 1.51(c)(1)(viii) requires the name of the government agency and the contract number, if the invention was developed by or while under contract with an agency of the U.S. government.

Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement. See 37 CFR 1.51(d). Since no substantive examination is made, such statements are unnecessary. The Office will not accept an information disclosure statement in a provisional application. Any such statement received will be returned or disposed of at the convenience of the Office.

This cover sheet information enables the Office to prepare a proper filing receipt and provides the Office of Patent Application Processing (OPAP) with most of the information needed to process the provisional application. See MPEP § 201.04 for a sample cover sheet.

III.    THE APPLICATION

The parts of the application may be included in a single document.

The paper standard requirements for papers submitted as part of the record of a patent application is covered in MPEP § 608.01, subsection I. Determination of completeness of an application is covered in MPEP § 506 and § 601.01 et seq.

The elements of the application are stored together in an electronic file wrapper, bearing appropriate identifying data including the application number and filing date (MPEP § 719).

See also the following the MPEP sections.

Provisional applications, MPEP § 201.04.

Divisional applications, MPEP § 201.06.

Continuation applications, MPEP § 201.06(c).

Continued prosecution applications, MPEP § 201.06(d).

Reissue applications, MPEP § 1401.

Design applications, MPEP Chapter 1500.

Plant applications, MPEP Chapter 1600.

International applications filed under the Patent Cooperation Treaty (PCT), MPEP Chapter 1800.

International Applications, commencement and entry into national stage, MPEP § 1893.01.

International design applications, MPEP Chapter 2900.

Ex Parte Reexamination, MPEP Chapter 2200.

Inter Partes Reexamination, MPEP Chapter 2600.

Supplemental Examination, MPEP Chapter 2800.

A model, exhibit, or specimen is normally not admitted as part of the application, although it may be required in the prosecution of the application (37 CFR 1.91 and 1.93, MPEP § 608.03).

Copies of an application will be provided by the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b) unless the application has been disposed of (see 37 CFR 1.53(e), (f) and (g) ).