What To Do If You Omit A Document Or File The Wrong Document In A New, Electronically Filed Application

June 4, 2010

in Practice Suggestions,The MPEP,Useful Information

Many filing errors (e.g., the failure to file all of a document, the failure to pay a fee, or the unintended filing of an unrelated document) are correctable without penalty by a corrective electronic submission, if it is filed the very same day.  This post discusses a few of the filing errors correctable in this way.

In my last post, I discussed one advantage of electronic filing – the 25% application size discount.  Another advantage of electronic filing is that a registered user of the USPTO’s EFS-Web may view newly-filed applications in Private PAIR almost immediately after submission.  This permits a user to promptly review all of the documents filed in an application to confirm their completeness and accuracy.  This also provides an opportunity to correct many types of filing errors with another electronic filing on the same day.  By the same day, I mean up to 11:59 p.m. Eastern Time in the US (which can be GMT -4:00 or -5:00 depending on the time of year due to daylight savings time).

The following are some examples of filing errors that can be corrected with a same day filing:

1.  Oaths or Declarations – An applicant may later electronically file an executed oath or declaration on the same day of the electronic filing of a new application.  The oath or declaration will not be considered late in this circumstance and, consequently, the surcharge for the late filing of an oath or declaration will be avoided.

2.  Filing Fees – An applicant may later electronically submit fees (e.g., the basic filing fee, search and examination fees, an application size fee, or an excess claims fee) on the same day that a new application is electronically filed.  Here, the fees will not be considered late and thus a surcharge for late payment of the filing fees will not be required.

3.  Incorrect and/or Missing Part of a Specification, Claims and/or Drawings – An applicant may electronically file a correct/missing portion of the written description, any new and/or modified claims, and missing drawings as a preliminary amendment on the filing date of an application.  Such an amendment in a nonprovisional application is considered as part of the original disclosure.  See 37 CFR 1.115(a)(1).  But note that a preliminary amendment filed with a submission to enter the national stage of an international application under 35 U.S.C. § 371 is not considered part of the original disclosure under 37 CFR §115(a) because it was not present on the international filing date accorded to the application under PCT.  See MPEP § 714.01(e).  Also, keep in mind that amendments to the written description may require a substitute specification.

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© 2010, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney

{ 1 comment… read it below or add one }

Robert K S June 11, 2010 at 2:30 pm

As always, helpful and useful information, Michael. Thank you.

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