Incorporation by reference patent refers to supplements to a patent application's disclosure statement.

The IP5 countries have specific requirements for patent disclosures. Every patent application must clearly and completely disclose an invention so that others can practice the invention if they're skilled enough to do so.

Sometimes, applicants want to save space, time, or cost by putting some of the content in a separate document as a supplement to the application. This is known as an incorporation by reference. The various IP5 countries hold different views on permitting incorporation by reference, as well as the necessary formalities that go into ensuring the material is sufficiently incorporated into the description.

Incorporation By Reference

If you want to use incorporation by reference, you will be subject to certain conditions and requirements. To supplement a previously filed patent application, you must specify the previously filed application by the following:

  • Filing date
  • Application number
  • IP authority or country where you filed the previous application

As long as you provide an address where you can be reached, the office will notify you and give you a set period of time in which to file a copy of drawings and specification from your previously filed application. Fees and surcharges may apply.

If you don't provide contact information, you have three months after you file your application to file a copy of the drawings and specification from the previous application.

If you abandon an application, it will be treated like it was never filed, unless the following occur:

  • The Patent Office receives the specification and drawings of the previous application.
  • The application is revived.

You must provide a certified copy of the previous application to the office within four months of the application filing date or within 16 months of the previously filed application. If not, you must include a petition that shows a sufficient cause of the delay, along with a petition fee.

Include the omitted portion of drawings or specification in your amended application. You must submit it within the specified time frame or before the date it's considered abandoned, whichever comes first.

You must also do the following:

  • Provide a copy of the previously filed application.
  • Provide an English language translation of the previously filed application if it's in another language.
  • Show where the inadvertently omitted portion of the drawings or specification is located in the previously filed application.

An incorporation by reference must do the following:

  • Be set forth in the specification.
  • Express a clear desire to incorporate by reference by using words such as “reference” and “incorporate."
  • Identify clearly the referenced application, patent, or publication.

What Happens Next

The application examiners may require you to supply a copy of the material that you want to be incorporated by reference. If you must supply this, you must also include a statement saying that the material being incorporated is the same material in the referencing application.

If you insert any material into the drawings or specification of an application, you must do so by amending the drawings or specification. Again, you must include a statement saying that the material you're inserting is the material that was previously incorporated by reference. Your amendment doesn't contain any new matter.

If you don't comply with all requirements regarding incorporation by reference, the office will find your application ineffective. You must correct any issues within the specified time frame or before the application is abandoned, whichever comes first.

You can only submit a correction to comply with certain sections if your application makes it clear you intend to incorporate by reference. Just referring to material doesn't count as an intention to incorporate the material. Also, you can only submit a correction for material that's been adequately described to clearly identify the document.

Patent drafters may find incorporation by reference a useful tool. Like anything in the patent specification process, they should use it carefully.

Applying for a patent is a lengthy, costly process. Because of all the rules and regulations, it's important to make sure you adhere to all of them. If you're unsure about any part of a patent application, you may want to consult with a professional in the patent law field. Getting your application right the first time can save you a lot of time and additional money.

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