Incorporate by reference

[OrgChemPhD_Agent]

When you incorporate patents or patent applications by reference in your specification, what number should you use, application #, publication # or patent # (granted)?  Thanks!

[lazyexaminer]

See MPEP 608.01(p) and 37 CFR 1.57 for incorporation by reference info.

If it's essential material (basically, required for 112 compliance) it has to be from a patent or patent application pub. If non-essential (basically, background info) it can be from mostly anything.

[OrgChemPhD_Agent]

See MPEP 608.01(p) and 37 CFR 1.57 for incorporation by reference info.

If it's essential material (basically, required for 112 compliance) it has to be from a patent or patent application pub. If non-essential (basically, background info) it can be from mostly anything.

Thanks for your reply.  I am incorporating patent applications by reference.  For PCT application, which number should I use, "WO2014/XXXXX" (publication number) or "PCT/US2014/YYYYYY"(application number"? or doesn't matter, either one?

[bluerogue]

Thanks for your reply.  I am incorporating patent applications by reference.  For PCT application, which number should I use, "WO2014/XXXXX" (publication number) or "PCT/US2014/YYYYYY"(application number"? or doesn't matter, either one?

Here's the relevant section from the MPEP section:

(e) Other material ("Nonessential material") may be incorporated by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications. An incorporation by reference by hyperlink or other form of browser executable code is not permitted.

Basically it doesn't matter.  Note that a PCT application cannot be used to incorporate essential material.

[Rabid Levity]

Hi OrgChemPhD_Agent.  To your specific later question, I view use of publication numbers as being better than use of application numbers.  Easier for the public to find, I think.  So for PCT references, I would use a PCT publication number instead of a PCT application number.  To the point made by bluerogue, though, I will usually look to see if the PCT that I want to reference has entered the US as a national stage application, and if so, cite to that instead.

For US references, if published, I use the publication number (or if granted, the US grant number) instead of the US application number.  Sometimes one must use a US application number because the referenced US case has not yet published.  In such a situation, if the referenced US application publishes or grants during the pendency of my application, I will provide a specification amendment to substitute in the new publication or grant number for the originally supplied application number.

[lazyexaminer]

I would prefer a US Patent or Application Pub above anything else, if available, just in case it is later determined that the material is essential.

I would prefer a publication over an application, as it is probably easier to find, as Rabid Levity said, and also it is more clear what exactly is being incorporated. What are you incorporating if you incorporate an app? The app as filed? As amended? What of amendments after your date of incorporation? Are IDS references part of an app? There may be case law on these issues, and perhaps the questions are silly and the answers are obvious, but perhaps not, I prefer clarity. A publication has a clear 4 corners that you can look within.

[OrgChemPhD_Agent]

Thanks for your reply.  I am incorporating patent applications by reference.  For PCT application, which number should I use, "WO2014/XXXXX" (publication number) or "PCT/US2014/YYYYYY"(application number"? or doesn't matter, either one?

Here's the relevant section from the MPEP section:

(e) Other material ("Nonessential material") may be incorporated by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications. An incorporation by reference by hyperlink or other form of browser executable code is not permitted.

Basically it doesn't matter.  Note that a PCT application cannot be used to incorporate essential material.

Thanks, Bluerogue and Rapid Levity. The material I want to incorporate by reference is "essential material" and you are riht, I am just aware that "a PCT application cannot be used to incorporate essential material."

Under 37 CFR. 1.57(c), "essential material may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference."

I will find out the corresponding US application publication # and use that.  Thank you!

[OrgChemPhD_Agent]

I would prefer a US Patent or Application Pub above anything else, if available, just in case it is later determined that the material is essential.

I would prefer a publication over an application, as it is probably easier to find, as Rabid Levity said, and also it is more clear what exactly is being incorporated. What are you incorporating if you incorporate an app? The app as filed? As amended? What of amendments after your date of incorporation? Are IDS references part of an app? There may be case law on these issues, and perhaps the questions are silly and the answers are obvious, but perhaps not, I prefer clarity. A publication has a clear 4 corners that you can look within.

Got it. Thank you!

[bluerogue]

Under 37 CFR. 1.57(c), "essential material may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference."

I agree with Rabid and lazyexaminer above.  Use the patent publication or the patent.  I would say that incorporating by reference to the application # would not meet the requirement of incorporating to a US patent or a US patent publication.  There are good policy arguments for this result as well.  Citing to an application # may not inform the public as to what was incorporated.  For example, an application with a non-pub request and abandoned would never be made public.