Response to Notice to File Corrected Application Papers

This template is for a response to a notice to file corrected application papers received from the United States Patent Office (USPTO) advising an applicant of issues that need to be addressed relating to pre-examination formalities in a pending patent application. This template includes practical guidance and drafting notes. A Notice to File Corrected Application Papers is mailed during the pre-examination review stage of a patent application. The response is due within two months of the mailing date of the notice, although this time is extendable up to an additional four months. A Notice to File Corrected Application Papers is drawn to matters of formality alone since the examination of the application has not yet begun. Common examples of formalities that require correction include: • Drawings that are not reproducible (e.g., during scanning of the drawings for filing, the scanned copy ended up being smudged or fuzzy) • The specification refers to drawing figures that were not filed • Drawing figures that appear in the filed drawings but are not referenced in the specification • Spacing issues in the specification • Margin issues in the specification The necessary correction is done in a preliminary amendment submitted concurrently with the response. The preliminary amendment should use the same format as a conventional preliminary amendment or amendment after the first office action, using the same method for showing amendments to the drawings and specification, as needed. See, e.g., Patent Office Action Response. A copy of the Notice to File Corrected Application Papers must also be attached to the response. Typically, all three parts (the response to the notice, the preliminary amendment, and the required copy of the Notice to File Corrected Application Papers) are bundled together in a single filing. There is, however, no requirement to make a single filing. Thus, the preliminary amendment could be filed as a separate document, but it should be filed on the same day. It is important that your response is correctly filed and displayed in the file history. You should, therefore, include the following caption in a header in each page of your response: Attorney Docket No. [attorney docket number] Application No. [application number] Art Unit [art unit number] Response to Notice to File Corrected Application Papers mailed [mailing date] Each page should also be numbered to ensure that every page has been properly filed and to facilitate reference to a particular page of a response in later prosecution, if necessary. For a discussion of the requirements for non-provisional utility patent applications, see Patent Application Preparation and Filing (U.S. Utility Patent). For a quick reference on the requirements, see Utility Patent Application Preparation and Filing Checklist. For information on the requirements for PCT applications, see PCT Patent Application Preparation and Filing Checklist. For plant patent application requirements, see Patent Application Preparation and Filing (U.S. Plant Patent).