Application parts, filing date and formalities

Know what gets a filing date, what can come later, and who signs what. Since December 18, 2013, a utility nonprovisional needs only a specification (claims optional) and any required drawings for a filing date; designs still need a claim.

Filing, fees, benefit and priority2 min read4 sections

Must-know for the exam

Utility filing date: specification, with or without claims, plus required drawings (37 CFR 1.53(b))
Design filing date: specification including a claim, plus drawings (37 CFR 1.53(b))
Provisional filing date: 112(a) specification plus required drawings; no claims or oath (35 U.S.C. 111(b))
Claims, fees and the oath can follow on notice, with surcharges (37 CFR 1.53(f))
With a proper ADS, the oath or declaration can wait until the issue fee is paid (37 CFR 1.53(f)(3))
An assignee or obligated assignee may be the applicant (37 CFR 1.46)
Substitute statements cover deceased, incapacitated, unreachable or refusing inventors (37 CFR 1.64)
The ADS governs over an inconsistent declaration, unless the declaration was filed first (37 CFR 1.76(d); MPEP 602.01(a))
Inventorship is corrected under 37 CFR 1.48 with an ADS, fee and the new inventor's declaration
Nonpublication requests must be filed with the application; a later foreign filing needs notice within 45 days (35 U.S.C. 122(b)(2)(B))
Essential material may be incorporated only from U.S. patents or published U.S. applications (37 CFR 1.57(d))
Abstract: separate sheet, 150 words maximum (37 CFR 1.72(b))
A reference filing under 1.57(a) secures a filing date; copy and translation follow; priority is claimed separately
CPAs are available only for design applications (MPEP 201.06(d))

On this page · 4 sections

Traps that cost marks

Applying the pre-2013 rule that a nonprovisional needed a claim for a filing date.
Assuming the PLT change that dropped the claim requirement also applies to designs.
Thinking the oath can be filed after the patent issues.
Thinking only inventors can be applicants after the AIA.
Reaching for the old Rule 47 petition in an AIA-era application.
Forgetting the 45-day notice, which leads to abandonment.
Thinking a nonpublication request can be added later before publication.
Incorporating essential material from a journal article.

What can come later

•Claims (utility), with a surcharge.
•Filing, search and examination fees, with a surcharge.
•The inventor's oath or declaration, as late as issue fee payment with a proper ADS.
•An English translation of a foreign-language specification, with the processing fee.

Where to look

When a question turns on a detail you are unsure of, search these sources on the exam computer:

•MPEP 201.06(d), 601-608, 1120-1124 (9th ed., Rev. 01.2024)
•35 U.S.C. 111, 115, 118, 122
•37 CFR 1.41-1.64, 1.72-1.77, 1.213

Premium

Every note. Every question. One pass.

2 more sections of this note are part of Premium.

Every section of every study note
650+ original questions across every outline topic
Full timed practice exams
A worked explanation on every question
Your full mistake bank and weak-area review

Unlock with Premium

From about US$14.92/mo on the Until-you-pass pass (12 months)

Exam-style questions

← Previous note: Written description, enablement and claims (35 U.S.C. 112)All study notes